785 F.3d 625 (Fed. Cir. 2015), 2015-1139, Takeda Pharmaceuticals U.S.A., Inc. v. West-Ward Pharmaceutical Corp.

Docket Nº:2015-1139, 2015-1142
Citation:785 F.3d 625
Opinion Judge:Dyk, Circuit Judge.
Party Name:TAKEDA PHARMACEUTICALS U.S.A., INC., Plaintiff-Appellant v. WEST-WARD PHARMACEUTICAL CORPORATION, HIKMA AMERICAS INC., HIKMA PHARMACEUTICALS PLC, Defendants-Cross-Appellants
Attorney:JEFFREY I. WEINBERGER, Munger, Tolles & Olson LLP, Los Angeles, CA, argued for plaintiff-appellant. Also represented by TED G. DANE, ELIZABETH LAUGHTON; ERIC KELVIN CHIU, AMY GREYWITT, San Francisco, CA; MARY W. BOURKE, Womble, Carlyle, Sandridge & Rice, PLLC, Wilmington, DE; TRYN T. STIMART, Tys...
Judge Panel:Before NEWMAN, DYK, and HUGHES, Circuit Judges. OPINION filed by Circuit Judge DYK. Dissenting opinion filed by Circuit Judge NEWMAN. Newman, Circuit Judge, dissenting.
Case Date:May 06, 2015
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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785 F.3d 625 (Fed. Cir. 2015)

TAKEDA PHARMACEUTICALS U.S.A., INC., Plaintiff-Appellant

v.

WEST-WARD PHARMACEUTICAL CORPORATION, HIKMA AMERICAS INC., HIKMA PHARMACEUTICALS PLC, Defendants-Cross-Appellants

2015-1139, 2015-1142

United States Court of Appeals, Federal Circuit

May 6, 2015

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Appeals from the United States District Court for the District of Delaware in No. 1:14-cv-01268-SLR, Judge Sue L. Robinson.

JEFFREY I. WEINBERGER, Munger, Tolles & Olson LLP, Los Angeles, CA, argued for plaintiff-appellant. Also represented by TED G. DANE, ELIZABETH LAUGHTON; ERIC KELVIN CHIU, AMY GREYWITT, San Francisco, CA; MARY W. BOURKE, Womble, Carlyle, Sandridge & Rice, PLLC, Wilmington, DE; TRYN T. STIMART, Tysons Corner, VA.

TAKEDA PHARMACEUTICALS U 2 .S.A. v. HIKMA AMERICAS INC. CHARLES B. KLEIN, Winston & Strawn LLP, Washington, DC, argued for defendants-cross appellants. Also represented by JOVIAL WONG, STEFFEN NATHANAEL JOHNSON; SAMUEL S. PARK, Chicago, IL; WILLIAM G. JAMES, II, WILLIAM M. JAY, Goodwin Procter LLP, Washington, DC.

EDWARD A. MARSHALL, Arnall Golden Gregory LLP, Atlanta, GA, for amicus curiae The American College of Rheumatology.

MELISSA ARBUS SHERRY, Latham & Watkins LLP, Washington, DC, for amicus curiae Generic Pharmaceutical Association.

Before NEWMAN, DYK, and HUGHES, Circuit Judges. OPINION filed by Circuit Judge DYK. Dissenting opinion filed by Circuit Judge NEWMAN.

OPINION

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Dyk, Circuit Judge.

Takeda Pharmaceuticals U.S.A., Inc. (" Takeda" ) appeals the order of the United States District Court for the District of Delaware denying its motion for preliminary injunction. Takeda sought to enjoin West-Ward Pharmaceutical Corporation, Hikma Americas Inc., and Hikma Pharmaceuticals PLC (collectively " Hikma" ) from continuing its launch of Mitigare, a colchicine product for prophylactic treatment of gout, and from launching an authorized generic version of Mitigare. We affirm.

Background

Takeda owns several asserted patents1 that cover several methods of administering colchicine products to treat gout. Colchicine itself, which has been used for centuries, is not covered by Takeda's patents. The '647 and '938 patents (the " acute gout patents" ) are directed to methods of treating acute gout flares. The '655, '648 and '722 patents (the " drug-drug-interaction (DDI) patents" ) are directed to methods for administering colchicine for prophylaxis of gout in patients who are concomitantly taking certain drug inhibitors known as " CYP3A4" and " P-gp" inhibitors.

The acute gout patents recite methods of treating acute gout by administering 1.2 mg of oral colchicine at the onset of the flare, followed by 0.6 mg of colchicine about one hour later.

DDI patent '655 recites administering colchicine concomitantly with clarithromycin by reducing the typical prophylactic dosage of colchicine by 75%, including a dose of 0.3 mg once a day. DDI patent '648 recites concomitant administration with ketoconazole, where the reduced daily dose of colchicine is 25% to 50% of the

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daily dose, including a dose of 0.3 mg once a day. DDI patent '722 recites concomitant administration with 240 ml of verapamil, where the reduced daily dose of colchicine is 50% to 75% of the daily dose.

In 2009, Mutual was the first drug manufacturer to receive approval from the Food and Drug Administration (" FDA" ) to market colchicine for treatment and prophylaxis of gout flares. Takeda acquired Mutual and the approved New Drug Application (" NDA" ). Takeda sells the colchicine product under the brand name Colcrys.

In 2010, Hikma sought FDA approval of a colchicine product for prophylaxis of gout flares. It submitted an NDA under § 505(b)(2) of the Drug Price Competition and Patent Term Restoration Act of 1984 (the " Hatch-Waxman Act" ), codified at 21 U.S.C. § 355(b)(2). On September 26, 2014, the FDA granted Hikma approval to market its Mitigare colchicine capsule.

On October 3, 2014, Hikma launched Mitigare, and Takeda filed suit against Hikma, asserting induced infringement under 35 U.S.C. § 271(b) based on Hikma's labeling of the Mitigare product. Hikma planned on launching an authorized generic version of Mitigare as early as October 10, 2014. However, the district court granted Takeda's request for a temporary restraining order (" TRO" ) on October 9, 2014, restraining Hikma from selling Mitigare and from launching a generic colchicine product. The district court also restrained Takeda from launching an authorized generic version of its branded Colcrys product during the TRO and required that Takeda " provide notice to Hikma at least 10 business days before the launch of any authorized generic of Colcrys." J.A. 20.

On November 4, 2014, the district court denied Takeda's motion for preliminary injunction on the grounds that Takeda did not meet its burden of showing a likelihood of success on the merits for its induced infringement claims or irreparable injury. On the issue of the likelihood of success on the merits, the district court concluded that, although Hikma failed to raise a substantial question regarding the validity of the patents, Takeda had not met its burden of showing likelihood of proving induced infringement. On the issue of irreparable harm, the district court concluded that Takeda had not shown a causal nexus between Hikma's infringement and Takeda's alleged harm.

In the order denying a preliminary injunction, the court also ordered that, if Takeda took an immediate appeal (the next day), " the status quo [would] be maintained pending appeal" by extending the TRO, including its 10-day notice provision. J.A. 16-17.

Takeda timely appealed the denial of preliminary injunction, and Hikma cross-appealed. In its cross-appeal, Hikma argues that the extension of the TRO was based solely on its " consent," and it should not have been extended past oral argument in this appeal. After oral argument on January 9, 2015, we issued, without dissent, an order affirming the district court's denial of preliminary injunction and vacating the TRO, including its 10-day notice provision.2 Our order mooted Hikma's

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cross-appeal and Takeda's argument that the 10-day notice provision in the TRO was improper. Our vacating of the order did not affect Takeda's liability under the bond. We have jurisdiction pursuant to 28 U.S.C. § 1292(c).

Discussion

We review a denial of a preliminary injunction for abuse of discretion. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1345 (Fed. Cir. 2008) (citing Doran v. Salem Inn, 422 U.S. 922, 932, 95 S.Ct. 2561, 45 L.Ed.2d 648 (1975)). A court abuses its discretion if it " ma[kes] a clear error of judgment in weighing relevant factors or exercise[s] its discretion based upon an error of law or clearly erroneous factual findings." Id. (quoting Novo Nordisk of N. Am., Inc. v. Genentech, Inc., 77 F.3d 1364, 1367 (Fed. Cir. 1996)).

In general, a party seeking a preliminary injunction must establish that it is likely to succeed on the merits, that it is likely to suffer irreparable harm in the absence of relief, that the balance of equities is in its favor, and that an injunction is in the public interest. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1375-76 (Fed. Cir. 2009).

I

The relevant statutory provisions here are in the Hatch-Waxman Act. The Hatch-Waxman Act allows generic manufacturers to rely on certain streamlined FDA approval processes by which generic drug manufacturers can bring their products to market without submitting all of the extensive drug and clinical data ordinarily required of an NDA under 21 U.S.C. § 355(b)(1). In particular, an applicant seeking approval to market a generic version or variant of a drug may file either an Abbreviated New Drug Application (" ANDA" ) or a " 505(b)(2) application," sometimes called a " paper NDA." Id. § § 355(b)(2), (j). An ANDA allows applicants seeking approval for generic versions of existing drugs to rely on the safety and efficacy information for an approved drug listed in the Approved Drug Products with Therapeutic Equivalence Evaluations, or the " Orange Book." A paper NDA allows applicants seeking approval for a new drug or a change to an approved drug to rely on existing FDA findings of safety and effectiveness or studies not performed by the NDA applicant.

Both the ANDA and paper NDA pathways generally require applicants to submit one of several kinds of patent certifications, see id. § § 355(j)(2)(A)(vii)(I)-(IV), 355(b)(2)(A)--(B), including a " Paragraph IV" certification that the relevant patents are either invalid or not infringed, which may in turn trigger patent litigation under the artificial act of infringement created by 35 U.S.C. § 271(e)(2)(A). See § § 355(j)(2)(A)(vii)(IV), 355(b)(2)(A)(iv); Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 675, 110 S.Ct. 2683, 110 L.Ed.2d 605 (1990).

Here Colcrys was an FDA-approved drug, and Hikma elected to file a paper NDA pursuant to 21 U.S.C. § 355(b)(2). Hikma did not, however, file a Paragraph IV certification with respect to Takeda's patents because it relied on prior FDA findings of safety and efficacy concerning colchicine, and did not seek FDA approval for a use covered by Takeda's patents. As Takeda concedes, " [a]dministering colchicine for prophylaxis of gout flares is not covered by Takeda's asserted patents, except when it involves concomitant administration with certain other drugs." Appellant's Br. 4 n.1.

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As we explained in Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348 (Fed. Cir. 2003), Congress intended " that a single drug could have more than one indication and yet that [an] ANDA applicant could seek approval for...

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