United States District Court, D. Delaware
John C. Phillips, Jr., Esquire and Megan C. Haney, Esquire of Phillips, Goldman & Spence, P.A., Wilmington, Delaware. Counsel for Plaintiff. Of Imron T. Aly, Esquire of Schiff Hardin LLP and Ahmed M.T. Riaz, Esquire of Antares Pharma Inc.
Jack B. Blumenfeld, Esquire and Maryellen Noreika, Esquire of Morris, Nichols, Arsht & Tunnell, LLP, Wilmington, Delaware. Counsel for Defendants and Intervenors. Of Christopher J. Harnett, Esquire, James F. Haley, Jr., Esquire, Ching-Lee Fukuda, Esquire, Hassen A. Sayeed, Esquire, Jacqueline M. James, Esquire, and Steven K. Mossey, Esquire of Ropes & Gray LLP.
Sue L. Robinson, District Judge.
On February, 28, 2014, plaintiff Antares Pharma, Inc. (" Antares" ) filed a complaint alleging infringement of U.S. Patent Nos. 6,565,553 (" the '553 patent" ) and 8,480,631 (" the '631 patent" ) by defendants Medac Pharma, Inc. (" Medac Pharma" ) and medac GmbH, (collectively " Medac" ). (D.I. 1) Antares filed a motion for preliminary injunction directed to the '553 and '631 patents on March 14, 2014. (D.I. 6) On April 18, 2014, Antares amended its complaint, adding allegations of infringement of U.S. Patent Nos. RE 44,846 (" the '846 patent" ),
and RE 44,847 (" the '847 patent" ) (collectively with the '553 and '631 patents, " the patents-in-suit" ). (D.I. 27) Antares amended its motion for preliminary injunction on the same day to seek an injunction directed at the '846 and '631 patents. (D.I. 29)
On May 5, 2014 Medac Pharma answered the complaint and counterclaimed for invalidity and non-infringement of the patents-in-suit. (D.I. 40) The same day, Becton Dickinson France S.A.S., Becton, Dickinson and Company (collectively " Becton" ) filed an intervenor complaint seeking a declaratory judgment that no valid claim of the patents-in-suit is infringed by Becton and alleging that the patents-in-suit are invalid. (D.I. 39) On May 30, 2014, Antares answered the intervenor complaint and counterclaimed, alleging that Becton infringes the '553, '846 and '847 patents. (D.I. 52) The same day, Antares also answered Medac Pharma's counterclaims. (D.I. 53) On July 1, 2014, medac GmbH answered Antares' amended complaint and counterclaimed for noninfringement and invalidity of the patents-in-suit. (D.I. 77)
Presently before the court is Antares' amended motion for preliminary injunction. (D.I. 29) The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338.
Antares is a small, publicly traded, U.S.-based developer of automatic injection devices used to self-administer pharmaceuticals. (D.I. 27 at ¶ 2) In October 2013, the FDA approved Otrexup TM, which uses Antares' proprietary automatic injection device, and in February 2014, Antares began selling Otrexup[TM]. Otrexup[TM] is the first and only product approved by the FDA to administer methotrexate subcutaneously (under the skin) to treat rheumatoid arthritis (RA) and psoriasis. (D.I. 30 at 1-2)
Medac Pharma is a newly formed U.S. subsidiary of the German pharmaceutical company, medac GmbH. (D. I. 27 at~ 3-4) Medac Pharma is an innovator in injectable methotrexate, and its parent, medac GmbH, is the leader in the European market for such products. (D. I. 44 at 6) Medac GmbH commercializes hand-powered pre-filled methotrexate syringes in Europe. (D.I. 44 at 6) On September 10 2013, Medac Pharma submitted a 505(b)(2) application with the FDA for a methotrexate injection product, which will be sold under the trade name RASUVO[TM]. (D.I. 44 at 2)
There are two patents at issue: the '631 patent, titled " Hazardous Agent Injection System," which issued on July 9, 2013; and the '846 patent, titled " Needle Assisted Jet Injector," which issued on April 15, 2014.
III. STANDARD OF REVIEW
A preliminary injunction is " an extraordinary remedy that should only be granted in limited circumstances." Capriotti's Sandwich Shop, Inc. v. Taylor Family Holdings, Inc., 857 F.Supp.2d 489, 501 (D. Del. 2012). To be successful, a movant at bar must demonstrate: (a) a reasonable likelihood of success on the merits; (b) the prospect of irreparable harm in the absence of the injunction; (c) that this harm would exceed harm to the opposing party; and (d) that granting the injunction is in the public interest.
See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1344 (Fed. Cir. 2008). " If either or both of the fundamental requirements-likelihood of success on the merits and probability of irreparable harm if relief is not granted-are absent, an injunction cannot issue." Enzo Life
Sciences, Inc. v. Adipogen Corp., Civ. No. 11-88, 2011 WL 2559610, at *2 (D. Del. June 28, 2011) (citing McKeesport Hosp. v. Accreditation Council for Graduate Med. Educ., 24 F.3d 519, 523 (3d Cir. 1994).
A. Likelihood of Success on the Merits
1. The '631 patent
The '631 patent is directed to " a hazardous agent injection system," more specifically " a needle-assisted jet injector." ('631 patent, abstract, col. 45:8-14) The '631 patent distinguishes a " jet injector" (including a " needle-assisted jet injector" ) and an autoinjector or hand-powered syringe. (Col. 26:49-27:18) Specifically,
whereas a medicament injected into a subject via an autoinjector or hypodermic syringe is delivered in a bolus near the needle tip, the medicament delivered from a jet injector is sprayed rapidly into the tissue, typically remotely from the needle tip, and typically does not deposit the medicament in a bolus local to a needle tip. . . . Needle-assisted jet injectors . . . have pressures and speeds that are sufficiently high so that the medicament exits the needle tip as a fluid jet.
. . .
Because the medicament delivered by a jet injector is essentially sprayed rapidly into the subject's tissue, remotely from the needle tip, the medicament does not leave the jet injector as a single drop or bolus and is thus not delivered to a subject as a bolus local to a needle tip. Therefore, by using the jet injectors ...