Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Novartis Pharms. Corp. v. PAR Pharm., Inc.

United States District Court, D. Delaware

June 18, 2014

NOVARTIS PHARMACEUTICALS CORPORATION, NOVARTIS AG, NOVARTIS PHARMA AG, NOVARTIS INTERNATIONAL PHARMACEUTICAL LTD., and LTS LOHMANN THERAPIE-SYSTEME AG, Plaintiffs,
v.
PAR PHARMACEUTICAL, INC., Defendant. NOVARTIS PHARMACEUTICALS CORPORATION, NOVARTIS AG, NOVARTIS PHARMA AG, NOVARTIS INTERNATIONAL PHARMACEUTICAL LTD., and LTS LOHMANN THERAPIE-SYSTEME AG, Plaintiffs,
v.
WATSON LABORATORIES, INC., WATSON PHARMA, INC., and ACTAVIS, INC., Defendants

Page 734

Michael P. Kelly, Esq., McCARTER & ENGLISH, LLP, Wilmington, DE; Nicholas N. Kallas, Esq., FITZPATRICK, CELLA, HARPER & SCINTO, New York, NY; Filko Prugo, Esq., FITZPATRICK, CELLA, HARPER & SCINTO, New York, NY, Attorneys for Plaintiffs Novartis Pharmaceuticals Corporation, et al.

Melanie K. Sharp, Esq., YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE; E. Anthony Figg, Esq., ROTHWELL, FIGG, ERNST & MANBECK, P.C., Washington, D.C.; C. Nichole Gifford, Esq., ROTHWELL, FIGG, ERNST & MANBECK, P.C., Washington, D.C.; Seth E. Cockrum, Esq., ROTHWELL, FIGG, ERNST & MANBECK, P.C., Washington, D.C.; Brett A. Postal, Esq., ROTHWELL, FIGG, ERNST & MANBECK, P.C., Washington, D.C., Attorneys for Defendants Watson Laboratories, Inc., et al.

Page 735

TRIAL OPINION

Richard G. Andrews, U.S. DISTRICT JUDGE.

Novartis Pharmaceuticals Corporation, Novartis AG, Novartis Pharma AG, Novartis International Pharmaceutical Ltd., and LTS Lohmann Therapie-Systeme AG (collectively, " Novartis" or " Plaintiff" ) brought this suit against Watson Laboratories, Inc., Watson Pharma, Inc., Watson Pharmaceuticals, Inc. (collectively " Watson" or " Defendant" ), and Par Pharmaceutical, Inc.[1] alleging infringement of U.S. Patent Nos. 6,335,031 (" the '031 patent" ) and 6,316,023 (" the '023 patent" ) (collectively, " the patents in suit" ). Both patents share

Page 736

the same specification.[2] The '031 and '023 patents claim pharmaceutical compositions, transdermal devices, and methods of stabilizing compositions comprising the drug rivastigmine, which is an acetylcholinesterase inhibitor, and an antioxidant. (D.I. 310, p. 1). Novartis sells an Exelon® transdermal patch for the treatment of Alzheimer's disease that contains rivastigmine. Novartis listed the '031 and '023 patents in the Food and Drug Administration's " Approved Drug Products with Therapeutic Equivalence Evaluations," frequently referred to as the " Orange Book," as covering the Exelon® patches. Watson's Abbreviated New Drug Application 202, 119 (" ANDA" ) seeks approval to engage in the commercial manufacture, importation, use, or sale of a transdermal patch containing rivastigmine and an antioxidant prior to the expiration of the patents in suit.

Watson's ANDA product is a transdermal patch that contains a backing film, an adhesive bilayer comprised of a 905A adhesive and a 900A adhesive, and a protective release liner, a schematic of which is shown below:

(JTX 56, p. 1822-23). The process for manufacturing Watson's ANDA product can be summarized as follows: 1) the 905A adhesive and rivastigmine, the active ingredient, are mixed to form the 905A casting solution; 2) the 905A casting solution is applied to a polyester release liner, which is subsequently passed through a drying oven; 3) the 900A adhesive is applied to a polyester release liner and passed through a drying oven; 4) the release liner for the 905A layer is removed and the exposed 905A layer is laminated onto the 900A layer, thereby forming the adhesive bilayer; 5) the adhesive bilayer is then cut to size, packaged, and heat sealed into pouches. ( Id., pp. 1832-34). Watson's ANDA product is available in 5 and 10 square centimeter sizes. ( Id. ).

Novartis asserts that Watson's ANDA products infringe claims 3, 7, 13, 16, and 18 of the '031 patent and claims 2 and 7 of the '023 patent. Watson counters that the asserted claims are obvious under 35 U.S.C. § 103(a) and not infringed. The Court held a four day bench trial from August 26-29,2013. (D.I. 306, 307, 308 & 309). As explained below, Novartis proved that Watson's ANDA products infringe by a preponderance of the evidence, and Watson did not prove by clear and convincing evidence that the asserted claims were invalid as obvious.

I. INFRINGEMENT

The five asserted claims in the '031 patent depend from non-asserted independent claims 1, 11, and 15, which are drawn to pharmaceutical compositions, transdermal

Page 737

devices, and a stabilization method, respectively. Claim 1 of the '031 patent recites:

A pharmaceutical composition comprising:
(a) a therapeutically effective amount of (S)-N-ethyl-3-{(1-dimethylamino)ethyl}-N-methyl-phenyl-carbamate in free base or acid addition salt form (Compound A);
(b) about 0.01 to about 0.5 percent by weight of an antioxidant, based on the weight of the composition, and
(c) a diluent or carrier.

'031 patent, claim 1. In the claim language " Compound A" refers to rivastigmine, the " S" enantiomer of the racemic compound RA7.[3] Claim 3 narrows the pharmaceutical composition to those in which the antioxidant is " tocopherol, esters thereof, ascorbic acid, butylhydroxytoluene, butylhydroxyanisole or propyl gallate." Claim 7 recites a " transdermal device comprising a pharmaceutical composition as defined in claim 1, wherein the pharmaceutical composition is supported by a substrate."

The requirements of claim 11 are as follows:

A transdermal device comprising a backing layer, a layer comprising a therapeutically effective amount of (S)-N-ethyl-3-{(1-dimethylamino)ethyl}-N-methyl-phenyl-carbamate (Compound A) and an amount of antioxidant effective to stabilize Compound A from degradation in a polymer matrix, a release-liner and, disposed between the layer comprising Compound A in a polymer matrix and the release-liner, a discrete layer of adhesive material for releasably fixing said transdermal device to a patient's skin.

Id., claim 11. Claim 13 limits the identity of the antioxidant in the transdermal device to " tocopherol, esters thereof, ascorbic acid, butylhydroxytoluene, butylhydroxyanisole or propyl gallate."

Claim 15 recites:

A method of stabilizing (S)-N-ethyl-3-{(1-dimethylamino)ethyl}-N-methyl-phenyl-carbamate in free base or acid addition salt form (Compound A), wherein the method comprises forming a composition by combining Compound A with an amount of antioxidant effective to stabilize Compound A from degradation.

Id., claim 15. Claim 16 limits the method's antioxidant to " tocopherol, esters thereof, ascorbic acid, butylhydroxytoluene, butylhydroxyanisole or propyl gallate," and claim 18 limits the amount of antioxidant to " about 0.01 to about 0.5% by weight based on the weight of the composition."

Two claims from the '023 patent, claims 2 and 7, are also asserted by Novartis. Claim 2 depends from claim 1, which recites:

A pharmaceutical composition comprising 1 to 40 weight percent of (S)-N-ethyl-3-[(1-dimethylamino)ethyl]-N-methylphenyl carbamate in the form of a free base or acid addition salt, 0.01 to 0.5 weight percent of an antioxidant, and a diluent or carrier, wherein the weight percents are based on the total weight of the pharmaceutical composition.

'023 patent, claim 1. Claim 2 limits the composition of claim 1 to those where the antioxidant is " tocopherol, esters of tocopherol, ascorbic acid, esters of ascorbic acid, butylhydroxytoluene, butylhydroxyanisole,

Page 738

propyl gallate, and combinations thereof." Independent claim 7 requires:

A transdermal device comprising a pharmaceutical composition comprising 1 to 40 weight percent of (S)-N-ethyl-3-[(1-dimethylamino)ethyl]-N-methylphenyl carbamate in the form of a free base or acid addition salt, 0.01 to 0.5 weight percent of an antioxidant, and a diluent or carrier, wherein the weight percents are based on the total weight of the pharmaceutical composition.

Id., claim 7.

The claims asserted by Novartis can be broken down into two groups: the " presence" claims and the " function" claims. Claims 3 and 7 of the '031 patent, as well as claims 2 and 7 of the '023 patent, constitute the presence claims. These claims require proof that Compound A and an antioxidant are present. The Court defined " antioxidant" as an " agent that reduces oxidative degradation." (D.I. 250, pp. 1-2). There is no additional requirement that the antioxidant function with respect to Compound A because that is specifically required in the function claims. ( Id., p. 2 (" The patents repeatedly disclose the combination of Compound A and the antioxidant without specifically requiring that the antioxidant affect Compound A. It would be improper to preclude those embodiments by limiting 'antioxidant' to require that interaction." (internal citations omitted))).

Claims 13, 16, and 18 of the '031 patent are referred to as the function claims. All three claims require " an amount of antioxidant effective to stabilize compound A from degradation," which the Court construed to mean, " an amount of antioxidant that will significantly reduce degradation of Compound A over a prolonged period of time." ( Id., pp. 2-3). The function claims, therefore, have an additional requirement that the antioxidant interact with Compound A to reduce degradation. The Court also construed " stabilizing" to mean " significantly reducing degradation over a prolonged period of time." ( Id., p. 3). These three terms are the only ones at issue, and the parties agree that the remaining elements of the asserted claims are met. (D.I. 310, pp. 29-30).

In its post-trial briefing, Watson contends Novartis failed to prove infringement of the presence claims because those claims have a functional limitation and Novartis never proved that Watson's product contains an agent that reduces oxidative degradation of any component. (D.I. 318, pp. 1-2). Watson asserts it does not infringe the function claims because the testing conducted by Novartis's experts does not prove that Watson's ANDA product is an oxidative environment or that it contains a functioning antioxidant.

A. Legal Standard

" Under [35 U.S.C.] § 271(e)(2)(A), a court must determine whether, if the drug were approved based upon the ANDA, the manufacture, use, or sale of that drug would infringe the patent in the conventional sense." Glaxo, Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1569 (Fed. Cir. 1997). The application of a patent claim to an accused product is a fact-specific inquiry. See Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed. Cir. 2001). Literal infringement is present only when each and every element set forth in the patent claims is found in the accused product.[4] See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575-76 (Fed. Cir. 1995). The patent owner has the burden of proving infringement by a preponderance of the evidence. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 758 (Fed. Cir. 1984) (citing Hughes Aircraft Co. v. United States,

Page 739

717 F.2d 1351, 1361 (Fed. Cir. 1983)). Infringement can be shown by " any method of analysis that is probative of the fact of infringement," and, in some cases, " circumstantial evidence may be sufficient." Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1372 (Fed. Cir. 2009).

B. Findings of Fact

1. Butylhydroxytoluene (" BHT" ) is a well-known antioxidant.
2. BHT is present in Watson's ANDA product.
3. BHT is present in an amount between 0.01 and 0.5 percent by weight.
4. Rivastigmine is subject to oxidative degradation in an oxidative environment.
5. The presence of oxygen, peroxides, or other free radical generators creates an oxidative environment.
6. Oxygen, peroxides, and other free radical generators are present in Watson's ANDA product.
7. Watson's ANDA products show only minimal degradation of rivastigmine over a prolonged period of time.
8. BHT acts as an antioxidant to protect rivastigmine from oxidative degradation.
9. Watson's ANDA product infringes all asserted claims of the '023 ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.