Orange Book Blog

The Federal Circuit today reversed a district court decision that upheld the validity of Abbott's U.S. Patent No. 5,990,176, finding instead that Abbott's patent is inherently anticipated by U.S. Patent No. 5,684,211.  The '176 patent covers compositions of and processes for making sevoflurane, an inhalation anesthetic that Abbott sells under the brand names Ultane and Sevorane.  In 2001 Baxter filed an ANDA to market generic sevoflurane.

The '176 patent claims compositions comprising sevoflurane and a Lewis acid inhibitor (such as water) in an amount effective to prevent degradation of sevoflurane.  The '211 patent discloses a water-saturated sevoflurane composition, though the inventors did not recognize at the time that the water in the composition prevented degradation of sevoflurane.  At trial, the U.S. District Court for the Northern District of Illinois relied on Bristol-Myers Squibb v. Ben Venue in concluding that the '211 patent did not inherently anticipate the '176 patent because the purpose of the '211 patent was not to produce sevoflurane in its final usable form, in distinction to the purpose of the patent-in-suit.

The Federal Circuit's decision, written by Judge Garjarsa for a unanimous panel, noted initially that BMS v. Ben Venue applies only to process claims, and therefore is inapplicable to the composition claims of the '176 patent.  With regard to the process claims of the '176 patent, the Federal Circuit disagreed that the processes described in the '176 and '211 patents are directed to the same purpose.  The court stated:  "All that is contributed by the method claims of the '176 patent is the recognition of a new property of the prior art process."

Judge Gajarsa's opinion reaffirms the general principle that "a reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time."  In support of this principle, the Federal Circuit cited its own 1985 opinion in Titanium Metals and an 1892 Supreme Court decision, Ansonia Brass & Copper Co.

The Federal Circuit heard oral argument this past Tuesday in the Plavix case (Appeal No. 06-1613), in which Apotex is appealing a preliminary injunction enjoining Apotex’s sales of generic Plavix.  An .mp3 audio file of the oral argument may be downloaded from the Federal Circuit’s website (link).

On August 31st, Judge Sidney H. Stein of the U.S. District Court for the Southern District of New York granted a preliminary injunction to Sanofi-Synthelabo and Bristol-Myers Squibb in their patent infringement case against Apotex.  In a 58-page opinion, Judge Stein found that Apotex was unlikely to prevail at trial in proving invalidity or unenforceability of Sanofi’s U.S. Patent No. 4,847,265.  In addition, Judge Stein found Apotex’s defenses of laches and unclean hands unconvincing.

Judges Bryson, Clevenger, and Lourie heard the oral argument and will decide the appeal.  Though many issues were briefed, the arguments from the parties and questions from the panel focused on anticipation and irreparable harm.  Apotex argued that the disclosure of a genus of racemic compounds in Sanofi’s own prior art U.S. Patent No. 4,529,596 anticipates claim 3 of ‘265 patent, which is directed to a single enantiomeric compound encompassed in the genus disclosed in the ‘596 patent.  With respect to irreparable harm, Apotex argued that by agreeing to limit damages to 50% of Apotex’s sales of generic Plavix, Sanofi and BMS essentially admitted their damages could be calculated and therefore there is an adequate remedy at law, precluding an injunction.

In my view, the Federal Circuit panel hearing the oral argument seemed convinced that Judge Stein correctly decided the "likelihood of success on the merits" prong (in other words, that Apotex would be unable to prove invalidity at trial), and seemed a bit more skeptical that Sanofi and BMS would suffer irreparable harm if the preliminary injunction was vacated.  Even on irreparable harm, however, the panel asked tougher questions of counsel for Apotex, and seemed to favor plaintiffs’ position.  More than once, the panel reminded counsel that Apotex faced "an uphill battle" because of the high standard of review:  abuse of discretion.

The Federal Circuit could release an opinion on Apotex’s appeal at any time.  A trial in the district court is scheduled to begin on January 22, 2007.

RELATED READING:

• September 21, 2006 Orange Book Blog post

Judge Ann D. Montgomery of the U.S. District Court for the District of Minnesota recently granted Paddock Labs’ motion for summary judgment of noninfringement of Warner-Lambert’s U.S. Patent No. 4,743,450, which covers pharmaceutical formulations of moexipril hydrochloride, the active ingredient in Univasc.

Warner-Lambert granted Schwarz Pharma an exclusive license under the ‘450 patent to manufacture and sell drug products containing moexipril hydrochloride, an Angiotensin Converting Enzyme (ACE) inhibitor indicated for the treatment of hypertension and congestive heart failure.  Schwarz Pharma and Warner-Lambert sued Paddock Labs based on Paddock’s ANDA to market a generic version of Univasc.  Schwarz Pharma’s U.S. sales of Univasc amounted to $80 million last year.

In her opinion granting Paddock’s motion for summary judgment, Judge Montgomery rejected Paddock’s assertion of argument-based prosecution history estoppel, but agreed with Paddock’s assertion of amendment-based prosecution history estoppel.  During prosecution, in order to overcome an obviousness rejection, Warner-Lambert amended claim 1 of the ‘450 patent from reciting an ACE inhibitor composition comprising "a metal containing stabilizer" to an ACE inhibitor composition comprising "an alkalai or alkaline earth metal salt."  Judge Montgomery found this was a narrowing amendment made for reasons of patentability, raising a presumption of surrender of all equivalents of "metal containing stabilizers" that are not "an alkalai or alkaline earth metal salt"–including magnesium oxide, the alleged equivalent Paddock uses in its generic Univasc formulation.

The court further found that the plaintiffs failed to rebut the presumption by proving either that magnesium oxide was an unforeseeable equivalent or that the claim amendment was merely tangentially related to magnesium oxide.  Accordingly, the court granted Paddock’s motion for summary judgment of noninfringement.

In a last-ditch effort to avoid the finality of Judge Montgomery’s opinion and order, last week Schwarz Pharma filed a motion to alter or amend judgment pursuant to FRCP 59(e).  In its motion, Schwarz argues that it was legally and factually erroneous for the court to conclude that magnesium oxide was a foreseeable equivalent.

UPDATE:  On Oct. 26, concurrent with its motion under FRCP 59(e), Schwarz Pharma filed a citizen petition asking the FDA not to grant final approval to Paddock Labs’ ANDA until the district court rules on its motion.

As we previously reported in brief, Eisai recently won summary judgment of patent validity of U.S. Patent No. 5,045,552 in its lawsuit against Teva over generic Aciphex (rabeprazole sodium).  In a separate opinion handed down the same day, the court also denied in part and granted in part Eisai's motion for summary judgment of no inequitable conduct.  The latter opinion relates both to Teva and Dr. Reddy's, as both defendants asserted unenforceability of the '552 patent.  Aciphex is a proton pump inhibitor and, with annual sales of about $1.2 billion last year, it accounts for over 40% of Eisai's total U.S.drug sales.

In the opinion on Eisai's motion for summary judgment of patent validity, Judge Gerard E. Lynch of the U.S. District Court for the Southern District of New York held that the claims of the '552 patent would not have been obvious because there was no teaching, suggestion, or motivation to combine three prior art references asserted by Teva.  According to Judge Lynch, the non-obvious step was the selection of the lead compound in the first place:

While obviousness analysis is a totality-of-evidence inquiry, it is unnecessary to this decision to discuss each step of the combination Teva has proposed.  The inadequacy of proof as to one key step alone suffices to negate the possibility of ultimately persuading a reasonable fact finder on the stated standard.  That step is the incorporation of lansoprazole as the conceptual foundation of the asserted combination.

Judge Lynch reviewed Teva's arguments that one of ordinary skill in the art would have selected lansoprazole as the lead compound to ultimately produce rabeprazole, and concluded as follows:

Nothing about these teachings requires or even suggests the use of . . . lansoprazole as a lead compound.  Rather, [Teva] offers these teachings solely to explain modifications that would have been performed once lansoprazole was selected.  . . .  Expert testimony of a “good” or “reasonable” starting point is not sufficient to permit a finding by clear and convincing evidence that this combination is not just attractive in hindsight, but rather would have been made at the relevant time.  Without persuasive evidence of lansoprazole’s place in the pattern, [Teva’s] asserted combination falls apart.

Only Teva asserted the patent invalidity defense.  Dr. Reddy's had stipulated to the validity of the '552 patent.

In the opinion on Eisai's motion for summary judgment of no inequitable conduct, Judge Lynch reviewed the prosecution file histories of the '552 patent and a related U.S. patent application, "the '013 application."  The court concluded that there were genuine issues of fact requiring a trier of fact to assess both materiality and intent in Eisai's failure to disclose the co-pendency of the '013 application, which dealt with a homolog of rabeprazole, as well as Eisai's failure to disclose the patent office's rejections of certain claims in the '013 application.  On the other hand, Judge Lynch also granted summary judgment of no inequitable conduct as to two other allegations made by Teva and Dr. Reddy's.

Eisai has also brought suit against Mylan over generic Aciphex (Civil Action No. 04-656 in the S.D.N.Y.).  The suit against Mylan is stayed pending the results of the actions against Teva and Dr. Reddy’s.  Mylan has stipulated to be bound by the final judgments and any appeals in the suits against Teva and Dr. Reddy’s.

This morning the Supreme Court denied Ferring B.V.’s cert petition in Ferring v. Barr, a closely-watched inequitable conduct case.  The case concerns Barr’s ANDA to market a generic version of DDAVP (desmopressin acetate), a treatment for diabetes insipidus with annual sales of $200 million.

Last February, the Federal Circuit affirmed a district court decision holding, on summary judgment, that Ferring’s U.S. Patent No. 5,047,398 is unenforceable due to inequitable conduct (click here for Fed. Cir. opinion).  According to the Federal Circuit, four out of five declarations submitted to the PTO in support of the patent application during prosecution were written by scientists who had been employed or had received research funds from Ferring, and Ferring should have informed the patent office of those relationships.

Judge Newman strongly dissented from the majority opinion, writing:

Today my colleagues on this panel not only ignore Kingsdown and restore a casually subjective standard, they also impose a positive inference of wrongdoing, replacing the need for evidence with a "should have known" standard of materiality, from which deceptive intent is inferred, even in the total absence of evidence.  Thus the panel majority infers material misrepresentation, infers malevolent intent, presumes inequitable conduct, and wipes out a valuable property right, all on summary judgment, on the theory that the inventor "should have known" that something might be deemed material.

Amicus briefs in support of Ferring’s cert petition had been filed by PhRMA, BIO, and the Washington Legal Foundation.

RELATED READING:

• September 12, 2006 Patently-O post

Ortho-McNeil Neurologics, a unit of Johnson & Johnson, announced in a press release today that it won a preliminary injunction against Mylan in its patent infringement case aimed to protect Topamax (topiramate) from generic competition.  Topamax, indicated for the treatment of epilepsy and migraines, had U.S. sales of $1.4 billion last year.

Judge Stanley R. Chesler of the U.S. District Court for District of New Jersey wrote the opinion, in which he concluded that the patent in suit is likely to withstand Mylan’s obviousness defense because Mylan had not presented suffcient evidence of a "motivation, suggestion, or teaching" to modify the prior art.  Thus, this is yet another recent case turning on the Federal Circuit’s suggestion test, the merits of which are currently under consideration by the Supreme Court in KSR v. Teleflex.  Earlier this year, Judge Chesler dismissed Mylan’s inequitable conduct, non-enablement, and indefiniteness allegations on summary judgment.

Ortho-McNeil filed its motion for a preliminary injunction last July "to preserve the status quo" and prevent an at-risk launch when its 30-month stay expired in September.  Ortho-McNeil’s patent on topiramate, U.S. Patent No. 4,513,006, will not expire until September, 2008.

Pfizer announced in a press release today that the Federal Circuit has denied Ranbaxy’s request for rehearing in the Lipitor patent case between the two companies.  On August 2nd of this year, a panel of the Federal Circuit invalidated one of two Pfizer patents on atorvastatin, the active ingredient in Lipitor, but upheld the other (click here for Aug. 2 opinion).  Ranbaxy had appealed that decision.

The Pfizer patent that was previously declared valid and infringed is set to expire in March, 2010.  The patent declared invalid will expire in June, 2011, but Pfizer has indicated that it will seek to correct the defect in that patent through a reissue patent application.

Ranbaxy was the first generic drug company to file an ANDA challenging Pfizer’s patents on atorvastatin, and was considered especially agressive for doing so.  Lipitor is the world’s best-selling pharmaceutical, with sales last year of $12 billion.

RELATED READING:

• TheStreet.com article