Even as the clock is ticking down on the patent for its super blockbuster Singulair, Merck ($MRK) got smacked Friday with a negative decision in its battle with genericmaker Apotex over Merck's blockbuster Nasonex spray.
A federal judge in New Jersey ruled against Merck, saying Apotex's generic did not step on Merck's patent, then separately ruled against Apotex, throwing out its claim that Merck's patent on the nasal spray is invalid. Merck's general counsel Bruce Kuhlik tells Reuters it may appeal the decision, while Merck spokesman Ron Rogers tells Bloomberg, "As far as we know, the FDA has not approved Apotex's application. We do not expect generic competition near-term." Apotex declined comment.
This particular patent fight started in 2009, when Merck' sued Apotex over its application to make a generic of the blockbuster drug before Merck's patent expires in 2018. In an April trial Apotex claimed that its spray differs because it will not contain water, Reuters says. With sales just shy of $1.3 billion in 2011, Nasonex allergy spray is Merck's fifth-best-selling drug. The rebuff comes at a tough time for the drugmaker, however. In August, it loses loses patent protection on its best-selling drug Singulair, which last year brought in about $5.5 billion.
At its annual meeting last month, CEO Kenneth Frazier tried to reassure shareholders that all is not lost along with the patent protection on Singulair. He pointed out that its Januvia portfolio of diabetes drugs have become the best-selling branded diabetes medications in the world, and it also can look to increasing revenue from the hepatitis C drug Victrelis. Still, he acknowledged that it would be a tough few years, and that was before this most recent decision.