Less than a week after Allergan and Duke University dropped their allegation that Novartis' Sandoz willfully infringed Duke’s patent for eyelash growth serum Latisse (bimatoprost), a federal jury in Colorado has still sided with the plaintiffs, ordering Sandoz to pay $39 million.
The case surrounded Sandoz’s generic version of Latisse, which the company began selling in 2016, resulting in a steep decline in Allergan’s Latisse revenues.
The ’270 patent in question dates to 2017 and relates to how Latisse—a variation of Allergan’s glaucoma therapy Lumigan—is to be applied to promote eyelash growth.
Duke, which owns the patent, and Allergan, which licensed its use, argued in their lawsuit that Sandoz’s generic label provided evidence of the company’s “intent to encourage direct infringement." The label instructed users to perform "patented methods,” the complaint said.
The method cited in the court documents is a once-nightly drop of bimatoprost on a “disposable sterile applicator supplied with the package," which patients were told to "apply evenly along the skin of the upper eyelid margin at the base of the eyelashes.”
"Sandoz is disappointed in the jury’s verdict and will consider all available options, including appeals," a company spokesperson said.
During the trial late last month, Allergan and Duke dropped a claim that Sandoz willfully infringed the patent, court filings show.
This is not the first time the companies and Duke have battled in court over Latisse. Nearly a decade ago, Sandoz was successful in getting two Allergan patents invalidated.
Latisse won approval in 2008 to treat hypotrichosis of the eyelashes by increasing their length, thickness and darkness. It was the first drug of its kind for the condition and just the third to stimulate hair growth—the others being Merck’s Propecia and Johnson & Johnson’s Rogaine.
Allergan had modest commercial success with Latisse, pulling in sales of $70 million plus each year from 2009 to 2018.
Allergan sold itself to AbbVie for $63 billion in 2020.