Endo Pharm. Inc. v. Mylan Pharm. Inc.
| Decision Date | 28 January 2014 |
| Docket Number | Civil No. 11-CV-00717 (RMB/KW) |
| Parties | ENDO PHARMACEUTICALS INC., Plaintiff, v. MYLAN PHARMACEUTICALS INC., et al., Defendants. |
| Court | U.S. District Court — District of Delaware |
Jack B. Blumenfeld
Jeremy A. Tigan
Julia Heaney
Morris, Nichols, Arsht & Tunnell LLP
Attorneys for Plaintiff
Jeffrey I.D. Lewis
Richard Maidman
Sean Marshall
Edward R. Tempesta
Patterson Belknap Webb & Tyler LLP
Of Counsel for Plaintiff
Richard L. Horwitz
Bindu Ann George Palapura
David Ellis Moore
Potter Anderson & Corroon, LLP
Attorneys for Defendants
Douglas Carsten
Katherine Van Gunst
Elham F. Steiner
Matthew J. Bresnahan
Wilson Sonsini Goodrich & Rosati PC
T.O. Kong
Wilson Sonsini Goodrich & Rosati PC
Of Counsel for Defendants
INTRODUCTION
This is an action for patent infringement brought by Plaintiff Endo Pharmaceuticals Inc. ("Endo" or "Plaintiff") against Defendants Mylan Pharmaceuticals Inc. and Mylan, Inc. (collectively, "Mylan" or "Defendants") pursuant to 35 U.S.C. § 271(e)(2)(A), and §§ 271(a), (b), and (c). Specifically, Endo alleges that Mylan has infringed and/or will infringe U.S. Patent Nos. 5,464,864 (filed Nov. 7, 1995) (the "'864 Patent"), 5,637,611 (filed June 10, 1997) (the "'611 Patent"), and 5,827,871 (filed Oct. 27, 1998) (the "'871 Patent") (collectively, the "King Patents") in connection with Mylan's submission of Abbreviated New Drug Application ("ANDA") number 202931 seeking the approval of the U.S. Food & Drug Administration ("FDA") to market its generic ANDA Product prior to the expiration of the King Patents.
On July 18, 2013, the Honorable Joseph E. Irenas held a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and subsequently issued a claim construction opinion addressing three disputed claim terms of the King Patents (the "Claim Construction Opinion"). (Dkt. Ent. 167.) Although Mylan disputes the claim construction adopted by the Court, it conceded prior to trial that, under the Court's claim construction, Mylan infringes or will infringe the asserted claims of the King Patents. (Notice of Concession of Infringement, Dkt. Ent. 182.) However, Mylan maintained that the King Patents are invalid under the doctrines of anticipation, obviousness, written description, and enablement. The Court held a bench trial from November 12 through November 21, 2013, after which it permitted the parties to submit proposed findings of fact and conclusions of law.1
After consideration of the evidence and the parties' post-trial submissions, and for the reasons set forth below, the Court finds that (1) Endo has waived and is now judicially estopped here from pursuing claims against Mylan related to the'871 and '611 Patents in this litigation, and (2) the asserted claims of the '864 Patent are valid. Accordingly, the Court enters judgment against Mylan and in favor of Endo. This Opinion constitutes the Court's findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).2
I. BACKGROUND
Under the Federal Food, Drug, and Cosmetic Act, 21 U.S.C. § 301 et seq., the FDA must approve all new drugs before they may be distributed in interstate commerce. 21 U.S.C. § 355(a). To secure approval for a new drug, an applicant may file a New Drug Application ("NDA") that includes, inter alia, the number and expiration date of any patents which claim the drug or a method of using the drug if a claim of patent infringement could reasonably be asserted. Id. § 355(b)(2). "The FDA publishes the names of approved drugs and their associated patent information in the Approved Drug Products with Therapeutic Equivalence Evaluations list, commonly referred to as the 'Orange Book.'" AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1045 (Fed. Cir. 2010). An applicant seeking approval to market a generic versionof a drug that has already been approved may file an ANDA, which "allows an applicant to rely on the safety and efficacy information for the listed drug if the applicant can show that the generic drug is 'bioequivalent' to the listed drug." Id. (citing 21 U.S.C. § 355(b)(2), (j)).
"[F]or each patent listed in the Orange Book that claims either the listed drug or a use of the listed drug for which the applicant is requesting approval, an ANDA must include either one of four certifications or a 'section viii statement.'" AstraZeneca LP, 633 F.3d at 1046. If an applicant submits a certification, the applicant must certify "(I) that . . . patent information has not been filed, (II) that such patent has expired, (III) . . . the date on which such patent will expire, or (IV) that such patent is invalid or will not be infringed by the manufacture, use, or sale of the new drug." 21 U.S.C. § 355(j)(2)(A)(vii)(I)-(IV). The last of these is known as a "paragraph IV certification". If an ANDA applicant submits a paragraph IV certification and a patent infringement suit is commenced within 45 days, then the FDA may not approve the ANDA application until expiration of a 30-month statutory period. Id. § 355(c)(3)(C).
On November 8, 2001, the FDA approved NDA No. 21-006 for Frova (frovatriptan succinate) oral tablets. (Stipulated Facts("SF"), Dkt. Ent. 172 ¶ 8.) Frova is indicated for the acute treatment of migraine attacks with or without aura in adults. (Id. ¶ 10; see also John Campbell ("Campbell") Tr. 29:8-20, 29:25-30:10.)3 Physicians also prescribe Frova "off-label" for the treatment of menstrual migraine.4 (Dr. Brian Grosberg ("Grosberg") Tr. 1374:12-1376:2; see also Campbell Tr. 46:22-47:6.) The Orange Book associates the King Patents with frovatriptan succinate.5 (Answer, Dkt. Ent. 9 ¶ 36.)
Endo commercially markets Frova, which contains a compound chemically designated as (R)-(+)-3-methylamino-6-carboxamido-1,2,3,4-tetrahydrocarbazole monosuccinate monohydrate, known as frovatriptan monosuccinate monohydrate, as the active pharmaceutical ingredient ("API"). (SF ¶ 5; Dr. Vincent Rocco ("Rocco") Tr. 126:8-10; see also Dr. Graham Johnson ("Johnson") Tr. 1024:4-6.) The label for Frova refers to the API asfrovatriptan succinate. (Rocco Tr. 125:8-10; Campbell Tr. 28:10-12; PX-0008; PX-0009; PX-0059.)
The empirical formula for frovatriptan monosuccinate monohydrate is C14H17N3O -C4H6O4 H2O, and it has a molecular weight of 379.4. (SF ¶ 6; PX-0008; PX-0059.) Frova tablets contain 3.91 mg frovatriptan monosuccinate monohydrate, equivalent to 2.5 mg of frovatriptan free base. (SF ¶ 9; PX-0008; PX-0009.) This difference in weight is accounted for by the weight of the succinate and water molecules added to the free base. (Rocco Tr. 128:3-15.)
Chemical compounds may exist in a variety of forms, including free base forms, salts, solvates, hydrates, salt-hydrates, and salt-solvates. Frovatriptan monosuccinate monohydrate is a hydrated salt form of frovatriptan. (Rocco Tr. 99:15-101:22.) A salt is formed through a reaction between an acid and a free base (Rocco Tr. 99:15-17; Dr. Albert Lee ("Lee") Tr. 389:4-23); here, succinic acid reacts with the frovatriptan free base to form the salt (Rocco Tr. 99:18-100:8). A salt may be hydrous or anhydrous, depending on whether the molecule has water associated with it. (Rocco Tr. 101:3-12.) Frovatriptan monosuccinate monohydrate is a hydrate, which means that it is a crystalline form of a compound in which water is part of the crystal lattice. (Lee Tr. 390:4-6; Rocco Tr. 100:24-101:6.) Like a hydrate, a solvate is a crystalline form of a compound withsolvent molecules that form part of the crystal lattice. (Lee Tr. 390:12-13; see also Rocco Tr. 102:13-15.) As such, a hydrate can be considered a solvate in which water is the specific solvent. (Lee Tr. 390:13-15; see also Rocco 102:18-20.)
Certain molecules may exist in different orientations in three-dimensional space. (SF ¶ 30.) A molecule's three-dimensional configuration is referred to as its stereochemistry. (See Rocco Tr. 94:14-23.) Compounds may have the same molecular formula but different three-dimensional configurations, or stereoisomers. (See Rocco Tr. 94:19-23.) Where the stereoisomers are related to each other, and form non-superimposable mirror images of one another, they are known as enantiomers. (Rocco Tr. 94:24-95:25.)
A molecule's stereochemistry is indicated by certain naming conventions, such as inclusion of an (R) or (S) before the molecular formula, and may also be reflected in a diagram of the chemical structure. (SF ¶¶ 32-33; see also Rocco Tr. 96:4-97:9.) In a diagram, a line connecting two atoms represents a chemical bond located on the plane of the paper. A solid triangle represents a bond extending out in front of the paper (i.e., towards the reader), and a hatched triangle represents a bond extending behind the paper (i.e., away from the reader). (SF ¶ 33; Rocco Tr. 96:4-97:9.)
There are two enantiomers for frovatriptan, based upon whether the "NHCH3" component at the 3-position is extending towards or away from the reader. (Rocco Tr. 96:4-97:9.) The specific frovatriptan enantiomer used as the API in Frova is the (R)-(+) enantiomer, which has the following chemical structure:
Image materials not available for display.
(PX-0008 at 1 (Frova product label); see also SF ¶¶ 5, 20.)
Frova is indicated for the acute treatment of migraine. Migraines are a neurologic (i.e., central nervous system) syndrome characterized by episodes of severe cephalic (head) pain, which may be associated with neurological, autonomic, and/or gastrointestinal symptoms and which are frequently accompanied by nausea, vomiting, and/or sensitivity to light or sound. (SF ¶¶ 15-16; see also Dr. Stephen Peroutka ("Peroutka") Tr. 534:9-536:1; Grosberg Tr. 1336: 14-22; Johnson Tr. 659:7-661:21.) The art had a similar understanding as of the priority date. If untreated or unsuccessfully treated, a migraine attack typically lasts from 4 to 72 hours, with a median duration of 24 hours. (Grosberg Tr....
To continue reading
Request your trial