• By Sherri Oslick —

    Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

    Cumberland Pharmaceuticals Inc. v. Sagent Agila LLC et al.
    1:12-cv-00825; filed June 26, 2012 in the District Court of Delaware

    • Plaintiff:  Cumberland Pharmaceuticals Inc.
    • Defendants:  Sagent Agila LLC; Sagent Pharmaceuticals Inc.

    Infringement of U.S. Patent No. 8,148,356 ("Acetylcysteine Composition and Uses Therefor," issued April 3, 2012) following a Paragraph IV certification as part of Sagent's filing of an ANDA to manufacture a generic version of Cumberland's Acetadote® (N-acetylcysteine  injection, used to prevent or lessen hepatic injury after ingestion of a potentially hepatotoxic quantity of acetaminophen).  View the complaint here.


    Galderma Laboratories, L.P. et al. v. Actavis Mid Atlantic LLC

    3:12-cv-02038; filed June 26, 2012 in the Northern District of Texas

    • Plaintiffs:  Galderma Laboratories, L.P.; Galderma S.A.; Galderma Research & Development, S.N.C.
    • Defendant:  Actavis Mid Atlantic LLC

    Infringement of U.S. Patent Nos. 7,820,186 ("Gel Composition for Once-Daily Treatment of Common Acne Comprising a Combination of Benzoyl Peroxide and Adapalene and/or Adapalene Salt," issued October 26, 2010), 7,964,202 ("Method for Treatment of Common Acne," issued June 21, 2011), 8,071,644 ("Combinations of Adapalene and Benzoyl Peroxide for Treating Acne Lesions," issued December 6, 2011), 8,080,537 (same title, issued December 26, 2011), 8,105,618 ("Dermatological/Cosmetic Gels Comprising At Least One Retinoid and/or Retinoid Salt and Benzoyl Peroxide," issued January 31, 2012), and 8,129,362 ("Combination/Association of Adapalene and Benzoyl Peroxide for Treating Acne Lesions," issued March 6, 2012) following a Paragraph IV certification as part of Actavis' filing of an ANDA to manufacture a generic version of Galderma's Epiduo® Gel (adapalene and benzoyl peroxide, used to treat acne vulgaris).  View the complaint here.


    Pfizer, Inc. et al. v. Mylan Pharmaceuticals Inc. et al.

    1:12-cv-00106; filed June 26, 2012 in the Northern District of West Virginia

    • Plaintiffs:  Pfizer, Inc.; Wyeth LLC; Wyeth Pharmaceuticals, Inc.; PF Prism C.V.
    • Defendants:  Mylan Pharmaceuticals Inc.; Mylan Inc.

    Pfizer Inc et al. v. Anchen Pharmaceuticals Inc et al.
    2:12-cv-05535; filed June 25, 2012 in the Central District of California

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc; PF Prims C.V.
    • Defendants:  Anchen Pharmaceuticals Inc.; Anchen Inc.

    Pfizer Inc. et al. v. Watson Laboratories, Inc. Florida et al.
    0:12-cv-61268; filed June 25, 2012 in the Southern District of Florida

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Watson Laboratories, Inc. Florida; Andrx Corp.; Watson Laboratories, Inc.; Watson Pharma, Inc.; Watson Pharmaceuticals, Inc.

    Pfizer Inc. et al. v. Sandoz Inc.
    3:12-cv-03880; filed June 25, 2012 in the District Court of New Jersey

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Sandoz Inc.

    Pfizer Inc. et al. v. Zydus Pharmaceuticals (USA), Inc. et al.
    3:12-cv-03893; filed June 25, 2012 in the District Court of New Jersey

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Zydus Pharmaceuticals (USA), Inc.; Cadila Healthcare Ltd.

    Pfizer Inc. et al. v. Anchen Pharmaceuticals Inc. et al.
    1:12-cv-00808; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Anchen Pharmaceuticals Inc.; Anchen Inc.

    Pfizer Inc. et al. v. Roxane Laboratories Inc. et al.
    1:12-cv-00813; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Roxane Laboratories Inc.; Boehringer Ingelheim Roxane Inc.

    Pfizer Inc. et al. v. Apotex Inc. et al.
    1:12-cv-00809; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Apotex Inc.; Apotex Corp.

    Pfizer Inc. et al. v. Sandoz Inc.
    1:12-cv-00814; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendant:  Sandoz Inc.

    Pfizer Inc. et al. v. Breckenridge Pharmaceutical Inc. et al.
    1:12-cv-00810; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Breckenridge Pharmaceutical Inc.; Alembic Pharmaceuticals Ltd.; Alembic Ltd.

    Pfizer Inc. et al. v. Teva Pharmaceuticals USA Inc. et al.
    1:12-cv-00815; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Teva Pharmaceuticals USA Inc.; Teva Pharmaceutical Industries Ltd.

    Pfizer Inc. et al. v. Lupin Ltd. et al.
    1:12-cv-00811; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Lupin Ltd. ; Lupin Pharmaceuticals Inc.

    Pfizer Inc. et al. v. Watson Laboratories Inc. Florida et al.
    1:12-cv-00816; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Watson Laboratories Inc. Florida; Andrx Corp.; Watson Laboratories Inc.; Watson Pharma Inc.; Watson Pharmaceuticals Inc.

    Pfizer Inc. et al. v. Mylan Pharmaceuticals Inc. et al.
    1:12-cv-00812; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Mylan Pharmaceuticals Inc.; Mylan Inc.

    Pfizer Inc. et al. v. Wockhardt Ltd. et al.
    1:12-cv-00817; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Wockhardt Ltd.; Wockhardt USA LLC

    Pfizer Inc. et al. v. Zydus Pharmaceuticals USA Inc. et al.
    1:12-cv-00818; filed June 22, 2012 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Wyeth LLC; Wyeth Pharmaceuticals Inc.; PF Prism C.V.
    • Defendants:  Zydus Pharmaceuticals USA Inc.; Cadila Healthcare Ltd.

    The complaints in these cases are substantially identical.  Infringement of U.S. Patent No. 6,673,838 ("Succinate Salt of O-Desmethyl-Venlafaxine," issued January 6, 2004) following a Paragraph IV certification as part of defendants' filing of an ANDA to manufacture a generic version of Pfizer's Pristiq® (desvenlafaxine, used to treat depression).  View the Delaware Anchen complaint here.

  • Calendar

    July 11-13, 2012 – Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) – San Francisco, CA

    July 12, 2012 – Inducement to Infringe in Hatch-Waxman Litigation:  Lessons from Bayer Schering v. Lupin and AstraZeneca v. Apotex for Pharma Patents (Strafford) – 1:00 – 2:30 pm (EDT)

    July 17-19, 2012 – Product and Pipeline Enhancement for Generics*** (marcus evans) – Washington, DC

    July 30-31, 2012 – Freedom to Operate*** (American Conference Institute) – Philadelphia, PA

    July 30 to August 1, 2012 – Intensive Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    August 2, 2012 – USPTO Post-Grant Proceedings:  Meeting the New Requirements for Post-Grant and Inter Partes Reviews and Supplemental Examination (Strafford) – 1:00 – 2:30 pm (EDT)

    September 9-11, 2012 – IPO Annual Meeting (Intellectual Property Owners Association) – San Antonio, TX

    September 10-12, 2012 – Business of Biosimilars & Generic Drugs (Institute for International Research) – Boston, MA

    ***Patent Docs is a media partner of this conference or CLE

  • Brochure0625-1The Intellectual Property Owners Association (IPO) will be holding its 40th Annual Meeting on September 9-11, 2012 in San Antonio, TX.  Among the presentations being offered at the annual meeting are:

    • Patent Case Law Update
    • The America Invents Act – What Should Your Company or Client be Doing?
    • IPO's Corporate IP Benchmarking Survey: A Trend Analysis
    • International Issues in IP Transactions
    • Invalidity Rates Around the World
    • Emerging Market Strategies/Export Control
    • Tips and Tactics for Drafting and Using Settlement Licenses in Litigation Post-ResQNet
    • Trade Secret Protection: Trends, Developments and International Implications
    • Ethics Session

    In addition, Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit will present the luncheon keynote on September 10.

    A program for the meeting, including an agenda, descriptions of the scheduled sessions, and list of speakers, can be obtained here.

    The registration fee for the meeting is $500 (government/academic), $950 (IPO members), or $1,450 (non-members).  Those interested in registering for the meeting can do so here.

  • By James DeGiulio —

    Supreme Court Building #2In a history-making decision, the Supreme Court today in National Federation of Independent Business v. Sebelius upheld the Patient Protection and Affordable Care Act (PPACA) as constitutional under the taxation clause of the Constitution.  The individual mandate provision of the PPACA, which establishes the requirement that nearly all Americans secure "minimum essential" health insurance (26 U.S.C. § 5000A), has received most of the media attention.  Lost in the political buzz surrounding this case, however, is the impact of the decision on U.S. regulatory and patent law.  In contrast with the Court's decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., it was what the Supreme Court did not do today that provided the impact.  Justice Ginsburg summarizes the surprising result in her concurring opinion:  "In the end, the Affordable Health Care Act survives largely unscathed."  While perhaps not as headline-worthy as the individual mandate provision, the survival of the Biologics Price Competition and Innovation Act (BPCIA), which created a new approval pathway in the U.S. for biosimilar products, is still big news to the biotech/pharma world.  And it should be, for biologics totaled $112.93 billion in worldwide sales in 2011, which constituted a $5 billion, or 4.6 percent, increase over 2010 sales.

    In the company of the individual mandate provision, the BPCIA could be considered a minimally controversial provision.  None of the opinions expressed in this case discussed biologic drugs or biosimilars, and the BPCIA was barely acknowledged during oral argument, with Justice Bryer referring to it as "the biosimilar thing."  Following oral argument on March 26-28, the general feeling was that the PPACA would be substantially modified by the Supreme Court, and because the PPACA lacks a severability clause, the bill in its entirety was at risk of being struck down.  Should that have occurred, biosimilar producer representatives had indicated that they would lobby the President and Congress to move quickly to pass new biosimilars legislation.  Under the current political regime this could take years, and several of the exclusivity periods may have been shortened in the process (see "President's Latest Budget Proposal Seeks Decrease of Data Exclusivity Period and Elimination of Pay-for-Delay Agreements").  During that time, the U.S. would have fallen even farther behind the rest of the world with biosimilars.  Europe, in particular, has had a biosimilar pathway in place for nine years (since 2003), and has approved at least fourteen biosimilar products so far.  If the uptake of biosimilars in Europe is any indication, there is plenty of incentive to enter the U.S. market as soon as possible.  For example, Hospira's epoetin alfa (EPO) biosimilar Retacrit, used to treat anemia resulting from kidney failure and chemotherapy, is already in use in Europe and Australia, and worldwide EPO sales totaled $3.73 billion last year.  Overall, the European biosimilars market generated revenues of approximately $172 million in 2010 and is expected to reach almost $4 billion by 2017.  Despite these profit incentives, and despite the framework being in force for over two years already, no biosimilars have been approved in the U.S., and most indications are that none are close (as of February, the FDA had yet to receive its first ABLA application).

    Biotechnology Industry Organization (BIO)Today's Supreme Court decision erases any hesitation biosimilar producers may have had in using the BPCIA due to the uncertainty of its survival.  With the biosimilars framework intact, efforts to shape the implementation of the pathway will certainly surge:  the Biotechnology Industry Organization (BIO) has already issued a statement reconfirming its efforts to collaborate with the FDA on implementing the biosimilars pathway in such a way that will "ensure patient safety, expand patient access and competition, and provide necessary and fair incentives that will help spur continued biomedical breakthroughs."  Biosimilar producers can now move forward full steam with their biosimilar products without fear of legislative overhaul and potential disruption of their FDA approval progress.  The result is certainly a relief for biosimilar producers who have already invested resources in seeking biosimilar approval from the FDA.  Pioneer biosimilar producers such as Sandoz and Hospira are already in Phase III human testing, and they have relied on the BPCIA to provide some clarity as to how biosimilars will be regulated in the U.S.  The survival of the BPCIA is welcome news for biologics patient consumers as well, who hope to see lower prices in the near future on these important and typically costly drugs.  How much lower the prices will fall is unclear, but by way of example, Hospira has predicted that upon a generic EPO entering the U.S. market, the initial discount would probably be about 35 percent or 40 percent below the reference product price.

  • By Kevin E. Noonan —

    LillyWe are living in an age of retrenchment with regard to patent law, where thirty years of Federal Circuit precedent, from the court created by Congress to harmonize U.S. patent law to great public benefit, is being reconsidered by the inconstant, almost fickle attention of the U.S. Supreme Court.  This has led (somewhat predictably) to a general questioning of patent law and its proper boundaries, evidenced no more clearly by Justice Breyer's ruminations in Mayo Collaborative Services v. Prometheus Laboratories, Inc. regarding what he perceives as the Janus-like qualities of patent protection:

    Patent protection is, after all, a two-edged sword.  On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery.  On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements.

    While this analysis smacks more of Goldilocks than patent jurisprudence (and the opinion provides no rationale or evidence for the Justice's prejudice), it does illustrate the Pandora's box that is opened when Kant's admonition to "doubt everything" becomes the basis for decisions that make no precedent firm.

    Another case that illustrates the point is, of course, the Myriad case, in which plaintiffs, many amici, and even the Department of Justice are perfectly willing to reverse thirty years of administrative and judicial precedent (not to mention squandering the untold amounts expended to obtain patent protection of DNA molecules) in a grand, Emily Latella-like gesture of "never mind" regarding gene patenting.

    There is one claim at issue in the Myriad case that seems the "odd man out," and that is claim 20 of U.S. Patent No. 5,747,282:

    20.  A method for screening potential cancer therapeutics which comprises:  growing a transformed eukaryotic host cell containing an altered BRCA1 gene causing cancer in the presence of a compound suspected of being a cancer therapeutic, growing said transformed eukaryotic host cell in the absence of said compound, determining the rate of growth of said host cell in the presence of said compound and the rate of growth of said host cell in the absence of said compound and comparing the growth rate of said host cells, wherein a slower rate of growth of said host cell in the presence of said compound is indicative of a cancer therapeutic.

    Unlike the isolated DNA claims and the method claims for diagnosing/assessing a patient's genetic risk of cancer, claim 20 is directed to a screening method for identifying a compound with potential as a cancer therapeutic by having the property of reducing the growth rate of a cell containing an altered (presumably mutant and cancer-related) BRCA 1 gene and not altering the growth rate of a "normal" cell, i.e. one that does not contain an altered BRCA1 gene.  Although not the product of a rigorous analysis, it is likely that there are at least as many claims of this nature in granted patents as there are claims to isolated DNA molecules.

    And yet even this claim has been thrown into question and doubt, a doubt explored in an amicus curiae brief by Eli Lilly & Co.  The brief, written by Robert Armitage and James Kelley, makes a bold request of the Federal Circuit:  to create a "bright line" rule that claims to entirely mental processes "epitomize" patent-ineligible inventions.  Further, the authors argue that a claim reciting multiple steps should be patent-ineligible if even only one of the steps is "entirely mental," and that if a claim like claim 20 does not preclude a step from being performed mentally it should be held patent-ineligible.

    Their rationale for this calculus is as follows.  Patent-eligibility should be used as a threshold filter that defines as being patent ineligible any claim that sets out one or more "mental steps."  The brief defines a "mental step" as "a process step drafted in a sufficiently broad manner such that the step includes embodiments that can be carried out mentally" and more specifically "if no limitation in the step precludes the possibility of the human mind performing the step."  This proscription is based as an "unavoidable corollary" on the "abstract idea" prong of the Supreme Court's patent-ineligibility precedents (albeit being an extension thereof), and on statements from the Court in both Bilski v. Kappos and Mayo v. Prometheus.  The brief also argues that a multistep process is a "combination" invention "for which 35 U.S.C. §112(f) (formerly known as §112, 6th paragraph) dictates that each step of the combination must either explicitly set out one or more acts or be limited to the corresponding acts set forth in the specification of the patent."

    Amici's detailed argument begins by recognizing the difficulties in consistently and rationally applying the Supreme Court's nebulous criteria for what it a "natural law, natural phenomenon or abstract idea."  One "useful analytical kernel" the authors draw from the Supreme Court case law is that the Court abjures patenting for mental concepts (natural laws) expressed symbolically (explaining the penchant for cases as diverse in outcome as Diamond v. Chakrabarty and Mayo v. Prometheus to cite Einstein's equation relating mass and energy).  This leads the authors to their position that it may be more analytically rigorous, and easier to apply, a "mental step" filter instead of the "tripartite test for exclusion" used by the Supreme Court.  The policy rationale is that "[t]here can be little doubt that the patent laws were never intended to sanction patentability for inventions that are embodied specifically and exclusively in human thought, human thinking, or human thought processes," if only because infringement of such a claim would involve "no act, just thought."  The brief cites In re Heritage, 150 F.2d 554, 556 (CCPA 1945), for the proposition that claims directed to "purely mental processes" are not patent eligible, and that the dissent in Diamond v. Diehr made a similar point, that there is a "mental step" exclusion from subject matter eligibility.

    The brief further sets out a "poison species" and a "poison step" approach wherein the presence of even one step that can be characterized as a mental step is enough to bar patent eligibility for the claim.  The "poison species" rule is derived from the requirements for novelty, non-obviousness, written description, and enablement, where even a single non-novel or obvious species falling within the scope of a claim, or a single undescribed or non-enabled species, renders a claim unpatentable.  The same principles should apply to patent eligibility according to the brief authors.  The brief argues that this position is consistent with the Mayo Court's admonition against using "artful claim drafting" to render a claim patent eligible (an admonition that seems to misapprehend the nature of patent claiming; see "Mayo Collaborative Services v. Prometheus Laboratories — What Should We Do? (or Can These Claims Be Saved?)").  In this regard, the brief identifies as "draftsman's machinations" claims written where the "mental step" is rendered patent eligible by the "trick of generically extending the reach of the claim to encompass embodiments to be performed by a machine, rather than the human mind."  This immediately raises the question of when does the "trick" change from merely a quantitative difference (in speed of a calculation, or the number of variables involved) to something qualitative (i.e., something a machine can do that the human mind cannot — a patenting version of the Turing test).  The brief recognizes that the "poison step" rule is contrary to longstanding precedent under 35 U.S.C. §§ 102 and 103, where the claims are considered as a whole and not cherry-picked step-by-step, but the Supreme Court's disregard for the niceties of the statutory distinctions make this less a disability in the argument than it might have been before the Mayo decision.  Indeed, one purported benefit of the amici's approach is to "avoid[] the confusion caused by conflation of novelty, inventiveness, and patent-eligibility considerations evident in Supreme Court dicta.  Mayo, 566 U.S. ___, 132 S. Ct. at 1299."

    Much of the brief's argument is based on defining a process claim as being a "combination" claim as set forth in 35 U.S.C. § 112(f):

    An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

    However, it is equally true that the patent statute defines the meaning of a "process" in 35 U.S.C. § 100(b):

    The term "process" means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    On its face this definition is broader than the definition in § 112(f), a conclusion consistent with the interpretation that § 112(f) sets forth a way of claiming using "means for" or "steps for" achieving a result without specifying the means or steps expressly in the claims.  The argument, particularly in Section E of the brief, is thus weakened by the implication that all method claims are governed by § 112(f).

    The "mental steps" identified in the brief present in claim 20 include "determining the rate of growth of said host cell in the presence of said compound and the rate of growth of said host cell in the absence of said compound," "comparing the growth rate of said host cells" and (perhaps) "wherein a slower rate of growth of said host cell in the presence of said compound is indicative of a cancer therapeutic," and the brief thus concludes that the claims are ineligible for patenting.

    The sweep of patent-ineligibility that would result from the Federal Circuit adopting such a bright line rule is breathtaking and suggests several verities highlighted by the Myriad appeal.  The first is that human beings have a strong capacity for deriving theoretical constructs that produce paradoxical or inefficient results; medieval scholars really did seriously consider questions like "how many angels can dance on the head of a pin," despite the irrelevancy of the question to the modern mind.  Here, the proposed bright line rule would make the analysis of patent eligibility easier by simply rendering most method claims patent ineligible (other than methods performed exclusively by machines).  Another is that the desire to produce "bright line" rules by the Federal Circuit can be seen, as is argued frankly in Lilly's brief, as a reaction against the somewhat "less than pellucid" clarity of Supreme Court teachings in patent law (and the Supreme Court's rejection of the Federal Circuit's bright line rules can be seen as a reflection of its tendency to consider the "totality of the circumstances" without regard to creating legal certainty).  It should also be appreciated that, like the medical amici in Mayo, Eli Lilly & Co. is not generally a "producer" of the types of inventions represented by claim 20 but a consumer.  It has been predominantly universities and biotechnology companies that have identified the molecular targets for drug discovery and development and have sought anf obtained claims like claim 20, and these entities (non-practicing though they may be in some circumstances) represent a potental source of increased cost to future drug discovery that the Lilly brief's authors could not fail to recognize.

    As was clearly evinced in the debates surrounding the Leahy-Smith America Invents Act, the types of questions presented by Mayo and Myriad elicit positions and responses that are political as well as legal in nature.  Under the current circumstances, it should not be surprising that self-interest (enlightened or otherwise) will provide at least some motivation for positions advocated by amici as well as the parties involved.  It will be up to the Federal Circuit and perhaps one day the Supreme Court to see past these partisan positions to define patent eligibility in a way that does not kill the innovation goose in an effort to save it from an uncertain and unsubstantiated risk from excessive patenting.  With luck these courts will be up to the task.

  • By Kevin E. Noonan —

    Burrilll, StevenEvery year, Steve Burrill, President and CEO of Burrill & Co. takes the stage at the BIO International Convention and spends 90 minutes giving the audience his take on the state of the biotech nation.  And every year he has a theme:  upbeat optimism in 2008 followed by downright pessimism in 2009, "Adapting for Success" in 2010, and "Looking Back to See Ahead' in 2011 (his 25-year retrospective).  Last week, Mr. Burrill was again in front of his BIO convention audience, and his theme was "The New Austerity."  And while on the surface his presentation was devoted to some of the most important challenges the industry faces, by the end Mr. Burrill left the audience with his characteristic enthusiasm for the prospects of the biotech industry.

    His presentation began by enumerating several "crises" facing the industry and the country, including aging and end of life care; obesity; the need for chronic care; the end of the 'blockbuster drug" era; poverty and its impact on disease; emergent diseases in a global population; the dysfunctionality of the healthcare system and what he termed "basic" economics — the reality that there isn't enough money to keep everyone alive.  His recap of the year since his last (2011) talk was not optimistic:  market gains during "recovery" reversed by current economic situation; high unemployment (8.2%) and political infighting (citing the debt ceiling fight as an example).  Particularly mentioned in his presentation was the European debt crisis, with many European countries in significant and growing debt (including BE, IT, ES, PT, IE and GR).  He then addressed the "solution du jour":  austerity, defined as "a policy of deficit-cutting by lowering spending often via a reduction in the amount of benefits and public services provided," noting that this is not good for the biotech industry (and that European populations appear to be rejecting it).  His presentation specifically focused on the effects of austerity on the pharmaceutical industry, including governments cutting spending on drugs or mandating reduction in drug prices (e.g., by requiring generic drugs where available).  He also cited issues created by permitting lower-priced drugs to be imported and efforts by governments to introduce efficiencies into drug development process.  Insurers were called out for their effects on markets by increasing requirements for reimbursement.

    BIO International ConventionHaving briefly surveyed the economic situation (he would return to it), the presentation then looked at "everything else."  This included the increase in biologic drugs and the possibility for biosimilars in the U.S. (assuming the Supreme Court does not do away with healthcare reform this Thursday).  In addition, he noted the increased uncertainty of patenting, in view of actions judicial (Prometheus) and legislative (patent reform).  And that the mainstay of the industry, "big pharma," is faced with a patent cliff at the same time that their presumptive saviors, startups and biotech companies are having greater difficulties in attracting capital.  On the positive side, Mr. Burrill showed a slide of various biologic drugs and an increased number of biologic drug approvals, predicting that these drugs would be "top selling" drugs by 2016 (including Humira, Avastin, Rituxan, Enbrel, Herceptin, Remicade, Prevnar 13).

    Mr. Burrill's presentation then posed a critical question for healthcare:  who pays and how are care decisions made?  More specifically, "what it the balance between individual responsibility and societal costs?  Should new drug approval be determined by safety and efficacy, or is cost also a factor?"  He then related this question (essentially regarding healthcare consumer decisions) to dilemmas for producers, specifically reduction in R&D spending both public and private.  The U.S. government has reduced R&D investment (although less of a drop under administration proposals than Congressional proposals) to the point that, without "American Recovery and Reinvestment Act" funding, federal funding would have been flat for the past 5 years.  This is also reflected in who gets funded, with the age of first RO1 award increasing from about 36 to about 42 from 1980 to 2011.  The track record for industry R&D is not much better, with U.S. funding between 2009 and 2012 steady between $70-80 million/year; worldwide between $140-150 million.  Looking specifically at industry segments important to his audience, Mr. Burrill reported that pharma R&D funding was down 11.5% from 2010-2011 and that a similar story could be told in biotech.

    In addition to financial pressures, Mr. Burrill's presentation identified weakening of intellectual property, "burdensome and opaque" regulation, a rising bar for reimbursement, and difficult access to capital as evidence that "it's getting tougher" to innovate.  The IP problems mentioned included Prometheus, Myriad, compulsory licenses in India (Bayer's Nexavar), and patent reform.  On the regulatory front, reform issues with FDA have led companies to seek approval outside the U.S. (which slows access to the U.S. market), a phenomenon that extends to approval of medical devices.  While acknowledging that an industry pioneer, Geron had left the stem cell space and that that the European Court of Justice had banned patents on human embryonic stem cells, the first glimmer of optimism surfaced when the presentation noted that other companies had stepped up to continue development of stem cell therapies.  Other areas of progress mentioned included antibody conjugates, in vitro production of "body parts," gene therapy successes, the impending advent of the $1,000 genome, and the NIH translation research initiative (indicating perhaps that the government recognizes the importance of translating basic science to the clinic and the marketplace).

    Then Mr. Burrill turned to the "big" themes, such as why innovation is important in the first place.  Innovation, he contended, is the only way to address problems of aging population and chronic diseases, but new technology also tends to increase rather than decrease costs (at least in the short term), and medicine and the healthcare system are still focused on treating rather than preventing disease (because, inter alia, changing unhealthy behaviors is difficult to do).  And healthcare costs are an important factor even in conventional terms:  healthcare costs increased from 13.7% of U.S. GDP in 1993 to 17.7% in 2012 (and are projected to be 19.5% in 2017), with the same trend being seen in other member countries of the Organization for Economic Co-operation and Development (OECD).  And, not surprisingly, the U.S. leads in per capita healthcare spending.  Presented were statistics indicating that 63% of disease-related deaths were non-communicable (cardiovascular disease, cancer, diabetes) and the presentation posed the question:  "is aging a disease that can be treated?"  The answer is "maybe not," but diseases characteristic of aging (like Alzheimer's) are, illustrated by estimates that delaying onset of Alzheimer's disease by 5 years would save $447 million in U.S. alone by 2050.

    Where there is healthcare, there has traditionally been drugs delivered by "Big Pharma" but Big Phama is "in trouble" according to Mr. Burrill (using a slide having a dinosaur to illustrate the point).  The "old" model (blockbuster drugs, "large, expensive clinical trials," marketing emphasis and sales in developed countries) doesn't work, and what the industry needs is to "retrench, redefine [its] business model, buy rather than build and seek opportunities in emerging markets," because the era of blockbuster, "one-size-fits-all" drugs over.  Illustrating the point was evidence that despite an overall increase in R&D spending 1992-2011, on average no more than ~27 new medical entities (NME) were produced per year and that the timeline for recovering development costs for these drugs had been "compressed" by generic drugs and Hatch-Waxman timelines (5 years of market exclusivity).  Added to this is the patent cliff, termed "significant":  branded drugs are losing patent protection at a rate of ~$17 billion in sales per year over the past 5 years, which will double in 2012 and remain at least about ~$20 million through 2014.  As a consequence, the trend is for innovator pharma companies to acquire technology (both successfully and not) and pursue other avenues (OTC, branded generics, access to emerging markets, biosimilars).  Regarding generics, 80% of prescriptions for these versions of branded drugs have a retail price 75% lower than their branded counterparts; as a result, generics account for only 26% of drug costs, with the generics market expanding in U.S. and globally, especially in emerging markets.

    The "new" model for innovation? — co-opetition (a term Mr. Burrill coined last year) — with innovator companies combining efforts, as well as partnering in emerging markets (CN, RU) and with payors.  Mr. Burrill's presentation also cited collaborations between pharma and academic researchers, which he termed "reaching over" traditional biotech start-ups by going after early stage development.  This development generated an interesting question, to wit "is big-pharma nuts?" in view of fact that less than 10% of candidates pre-phase II fail (and 35-40% of costs are incurred pre-phase II) — looking like a lose-lose proposition, where "thinking outside the box" is merely a reminder of why there is a box in the first place.

    Turning to what he does best, the presentation showed that partnering (rather than public offerings) have become a major funding source (compared with financing) over the past 5-7 years, but that venture capital deals are down after having recovered somewhat last year, and the trend over the past 12 months is for VCs to "move away" from therapeutic drug investment with "angel" investors "filling the gap."  Capital is available, but accessing it has become increasingly difficult — and while IPOs are still used by some, "M&A" exits (that is, takeovers) have been the the predominant "end game" for startups since 1998 – 2000.  But capital is "funding products, not companies" and there is a rise of government and NGO/patient (disease-focused) group participation around the world.

    Emerging markets (changing the global focus from US-EU-JP to BRICS and CIVETS countries) are becoming a "magnet" for foreign investment due to growing middle classes (defined as household income >$5,000/yr) and, as a result, finding an increasing consumer drug market.  In this environment, the opportunity and challenges facing the industry are due to unfamiliar business and regulatory environments.

    Another "big theme" of Mr. Burrill's presentation was wastefulness in pharma on many levels.  These included statistics that most (90%) drugs only work for at best 50% of the population; estimates that $350 billion are wasted annually simply due to this lack of effectiveness.  Worst of these are cancer drugs (which are 75% ineffective), but Mr. Burrill's list also included drugs for arthritis, depression, asthma, diabetes, and depression.  As a result, the focus is on the promise of personalized medicine, something desired by all segments of the medical supply chain (patients, doctors, drugmakers, regulators, and payers).  However, targeted drug treatment approaches are in their infancy, with 150 of the ~2 million protein targets presently used (and these targets are predominantly cancer targets).  But in infancy there are mistakes, and the experience has been more trial-and-error than theoretical, and as with all biotech, personalized medicine has over-promised and under-delivered.  In this regard, Mr.  Burrill also notes a more general problem, what his presentation labeled as "sloppy science," resulting in 15-fold increase in number of papers retracted since 2001 (339 in 2010 vs. 22 in 2001).  He did not provide any indication that this reflects increased complexity or reduced carefulness.

    In another theme (and one Mr. Burrill has discussed before), the existence or development of a paradigm shift in healthcare was discussed, changing from symptom-based, universal treatment models based on present illness to mechanism-based, individualized models based on prevention and recognition of heterogeneity of illnesses and potential illnesses.  As a consequence, healthcare systems are changing/must change, to focus on wellness instead of sickness and use technology to alter delivery and venue (another Burrill theme of "consumer digital health").  This change is accompanied by changes in roles — patients being less passive consumers than active managers of their own health status, with greater amount of (genetic) information and greater access to that information (both generally and their own personal health records).  In this new world, doctors are less "unquestioned authorities" and are now advisors, with greater integration in a team approach (comprising labs, pharmacists and other specialists), and also relying on digital information and prevention instead of treatment.  Increased (genetic) information is "transforming" medicine from treating the symptoms to changing the "actual" disease according to this portion of Mr. Burrill's presentation.

    All this genetic information is accelerated by falling costs for sequencing — the "$1,000 genome" by the end of 2012 — but this raises the "era of the big data problem," raising the question of how this data will be handled.  The problem with genetic information is magnified by the "omics" revolution (genomics, proteomics, metabolomics, etc.), which is really just a manifestation of the complexities of the biology.  Once again, the effects are most prominent in cancer, where from 21-73% of different cancer types have identified mutations having therapeutic significance as targets.  Mr. Burrill also discussed in his presentation a "refinement" in the granularity of what it means to have "cancer," illustrated by identification (on genetic grounds) of 38 types of leukemia and 51 types of lymphoma.  But there are also growing pains for the technology, as healthcare is still a "brick and mortar" industry and chronic illnesses have compliance issues.  Returning to the "big data" theme, Mr. Burrill asserted that sufficient computing power can "capture, validate and analyze" high volumes of data with benefits of multiple data sources and pattern recognition, enabling "real time" answers for doctors, consumers, payors, etc.  There was also a little traditional Burrill futuristic vision in the presentation, surrounding IBMs Jeopardy-playing Watson computer and its application to healthcare, and purported "brain chips" by IBM intended to mimic human brain.

    As Mr. Burrill indicated last year, there is another side of this paradigm change, namely social media, where 32% of people say they have used social media for healthcare (and ~30% of this is Facebook and YouTube) and the inherent (or potential) unreliability making this phenomenon problematic.  Mr. Burrill's presentation illustrated the "disruptive" aspects of this change by comparing the time taken to reach 50 million users for different technologies:  from the telephone (75 years) to radio (38), TV (13), the Internet (4), iPhones (2.5) and Facebook (< 1 year).  He identifies the smartphone as the "center of the digital revolution" based on adoption by physicians and patients (illustrated by ECG app as one of > 100,000 "healthcare" apps).  The benefits include increased access/delivery of healthcare, reduced costs, increased compliance, enabling better monitoring/compliance, changing behavior, and permitting the elderly to continue independent living longer.

    Fully 163 of Mr. Burrill's 209 slides relate to healthcare; at the end of the presentation, the slides turned to the other uses for biotechnology — agriculture and energy (as well as water purification and industrial applications generally).  His presentation mentions in passing that most "new" discoveries of fossil fuels occurred outside the Middle East in the past decade (South America, Australia, Canada).  But this developing industry is threatened by "austerity," which can prevent adoption of (today) more costly biofuels in favor of fossil fuels.  This of course has negative consequences for energy independence and security.

    Mr. Burrill's presentation also mentioned the conflict between agriculture and fuel needs, and that land and water are limited.  Capital requirements are "vast" in the aforementioned limited financial space; on this regard he used Amyris as an example of difficulties in scaling up to commercial levels and Wall Street's reaction (not good).  But the trend is to (try) to "go green," and the presentation cited efforts by traditional food (packaging) and chemical companies to invest/partner with biorenewable companies (citing several examples).  Government also as a role, in providing infrastructure, R&D funding, and tax and other incentives (regulations and policy).  The benefits for society (which in turn justify governmental investment) include increases in productivity and reductions in environmental impact, as well as reducing the carbon footprint.

    In conclusion, Mr. Burrill predicted the remaking of pharmaceutical companies, changing impact of value on pharma regulation, a continuing shift from doctors to payors to determine what healthcare will be provided, continued trend from IPO to acquisition as endgame, his personal obsession with "minute clinics" over traditional doctors' offices, the smartphone as medical advisor, and the digitalization of data and diagnostics.  His presentation ends on a typically upbeat note:  "value capture is key" and "opportunity to create value has never been greater."  Even austerity is not so bad in Mr. Burrill's view.  It makes capital efficient, fosters new businesses and business models, imposes discipline, prioritizes "true" innovation, and focuses on capturing value, thus rewarding creativity.  Once again, Mr. Burrill points out that this is biotech's "greatest moment," and most if not all the BIO 2012 attendees hope that he is right.

    The complete Burrill Report can be purchased from Burrill & Co.; sales at BIO 2012 included Mr. Burrill's presentation slides.

  • By Donald Zuhn —

    USPTO SealIn a notice published in today's Federal Register, the U.S. Patent and Trademark Office announced that it will be hosting a Cooperative Patent Classification (CPC) External User Day event from 8:30 am to 12:00 pm (EST) on July 10, 2012 (77 Fed. Reg. 37879).  During the event, which will be held in the Madison Auditorium on the USPTO's Alexandria campus, the USPTO will provide an overview of the CPC, a new patent classification system being jointly developed by the USPTO and the European Patent Office (EPO).  USPTO staff will also provide information concerning external user interaction, accessibility, training and outreach related to the CPC.  Those interested in attending the event should e-mail their name and phone member to CPC_Users_Day@uspto.gov.

    EPOThe CPC is a detailed classification system that will be based on the International Patent Classification, which is administered by the World Intellectual Property Organization (WIPO), and will also use the European Classification system (ECLA) as a foundation.  According to the two offices, the new classification system will incorporate the best classification practices of both the U.S. and European systems.  The joint effort to develop a joint patent classification system was first announced in October 2010 (see "USPTO and EPO to Develop Joint Patent Classification System").  Four months after that announcement, the USPTO and EPO provided additional information regarding the foundation of the joint classification system (see "USPTO and EPO Agree to Principles of Joint Patent Classification System").  And one year after their initial announcement, the two offices launched a website providing information on the CPC initiative (see "USPTO and EPO Launch Patent Classification Website").  According to the USPTO, next month's event is the next step in educating and informing external stakeholders about the current development and future implementation plans of the CPC.

    Earlier this month, USPTO Director David Kappos posted a list of twelve reasons why the USPTO is moving to the CPC on his blog.  Director Kappos also noted that the Office had provided an overview of its CPC efforts to the examining corps in February.  As for the twelve reasons for moving to the CPC, the Director indicated that:

    1. The CPC, unlike the current U.S. Patent Classification System (USPC), would be current and revised on a regular basis.

    2. The CPC would allow for more frequent updating, allowing the offices to adapt to filing trends and incorporate emerging technologies into the scheme.

    3. The CPC, unlike the USPC, would be more compatible with the classification schemes used by the EPO, KIPO, JPO, and SIPO, which are all based on the IPC standard.

    4. U.S. examiners using the CPC system will have better access to pertinent prior art.

    5. By providing more 50,000 additional breakdowns, the CPC will provide more targeted searches yielding more focused results.

    6. The CPC will benefit from the incorporation of U.S. documents dating back from 1920, which were classified under the ECLA.

    7. U.S. examiners will benefit by only having to classify documents filed first in the U.S.

    8. The USPTO and EPO examiners will be able to share and exchange classification and search tools.

    9. Examiners and users worldwide will be able to conduct patent document searches by accessing the same document collections.

    10. The CPC will allow the USPTO to use work of other intellectual property offices.

    11. The USPTO will run both the CPC and USPC in parallel for two years beginning on January 1, 2013 to allow examiners sufficient opportunity to learn and transition to the new scheme.

    12. The CPC will eventually be used by more than 45 patent offices in their internal search systems, thus becoming the international standard.

  • By Sherri Oslick —

    Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

    Bristol-Myers Squibb Company v. Sandoz Inc.
    1:12-cv-00787; filed June 21, 2012 in the District Court of Delaware

    Infringement of U.S. Patent No. 5,206,244 ("Hydroxymethyl (Methylenecyclopentyl) Purines and Pyrimidines," issued April 27, 1993) following a Paragraph IV certification as part of Sandoz's filing of an ANDA to manufacture a generic version of BMS's Baraclude® (entecavir, used to treat chronic hepatitis B virus infectrion).  View the complaint here.


    Illumina, Inc. et al. v. Complete Genomics, Inc. et al.

    3:12-cv-01465; filed June 15, 2012 in the Southern District of California

    • Plaintiffs:  Illumina, Inc.; Illumina Cambridge Ltd.
    • Defendants:  Complete Genomics, Inc.; DOES 1-50, inclusive

    Infringement of U.S. Patent No. 8,192,930 ("Method for Sequencing a Polynucleotide Template," issued June 5, 2012) based on Complete Genomic's manufacture, use, sale, and/or offer for sale of products, services, methods and/or systems, under the moniker "COMPLETE GENOMICS Analysis Platform."  View the complaint here.


    Janssen Products, L.P. et al. v. Teva Pharmaceuticals USA, Inc. et al.

    2:12-cv-03569; filed June 13, 2012 in the District Court of New Jersey

    • Plaintiffs:  Janssen Products, L.P.; Janssen R&D Ireland; G.D. Searle, LLC
    • Defendants:  Teva Pharmaceuticals USA, Inc.; Teva Pharmaceutical Industries, Ltd.; Mylan Pharmaceuticals Inc.; Mylan Inc.

    Infringement of U.S. Patent No. RE42,889 ("α- and β-Amino Acid Hydroxyethylamino Sulfonamides Useful as Retroviral Protease Inhibitors," issued November 1, 2011) in conjunction with defendants' filing of an ANDA to manufacture a generic version of Janssen's Prezista® (darunavir, used to treat human immunodeficiency virus (HIV-1) infection).  View the complaint here.

  • Calendar

    June 24-26, 2012 – IP Business Congress (Intellectual Asset Management (IAM) magazine) – Cascais, Portugal

    June 25-26, 2012 – Hatch-Waxman Boot Camp*** (American Conference Institute) – San Diego, CA

    July 11-13, 2012 – Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) – San Francisco, CA

    July 12, 2012 – Inducement to Infringe in Hatch-Waxman Litigation:  Lessons from Bayer Schering v. Lupin and AstraZeneca v. Apotex for Pharma Patents (Strafford) – 1:00 – 2:30 pm (EDT)

    July 17-19, 2012 – Product and Pipeline Enhancement for Generics*** (marcus evans) – Washington, DC

    July 30-31, 2012 – Freedom to Operate*** (American Conference Institute) – Philadelphia, PA

    July 30 to August 1, 2012 – Intensive Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    August 2, 2012 – USPTO Post-Grant Proceedings:  Meeting the New Requirements for Post-Grant and Inter Partes Reviews and Supplemental Examination (Strafford) – 1:00 – 2:30 pm (EDT)

    September 10-12, 2012 – Business of Biosimilars & Generic Drugs (Institute for International Research) – Boston, MA

    ***Patent Docs is a media partner of this conference or CLE

  • Boston SkylineThe Institute for International Research (IIR) will be holding its 13th Annual Business of Biosimilars & Generic Drugs conference from September 10-12, 2012 in Boston, MA.  The conference offer presentations on the following topics:

    September 10 — Summits
    • Biosimilar R&D Scenario Planning Session
    • Map the Strengths, Weaknesses, and Defenses of your IP Assets to Prepare for the Challenges of the Follow-On Process

    September 11 — Main Conference:
    • Think Different — Navigating the Brave New Globalized Life Science Industry
    • The World is Flat — Make Sure Your Sales Are Not — Commercializing Generics in Global and Emerging Markets
    • The New Paradigm in Strategic Partnerships for Follow-on Biopharmaceutical Development
    • Reimbursement Strategies for Generics & Biosimilars Around the World

    BannerLegal/IP for Biosimilars Track
    • Turn Antitrust Laws to your Advantage in the Generics and Biosimilars Marketplace
    • Best Practice in Portfolio Management during Patent Exchange Process
    • Experiences from Developing Biosimilars for EMA: Unique Perspectives from Growth Hormones to Monoclonal Antibodies
    • Adapt to New Regulatory Requirements for Biosimilar Approval and Success

    Market Access for Biosimilars Track
    • The Strategy and Case Study of Global Biosimilar Development
    • Successful Designs for R&D Collaborations and Tech Transfer Necessary to the Biosimilars Market in China
    • The Future of Biosimilars in Specific Emerging Markets
    • When Being the Same is Good Enough:  Building Public Confidence in Biosimilars

    Market Access for Generics Track
    • Getting Global Manufacturing Processes Prepared for Product Rollouts
    • Direct-to-Pharmacy and Direct-to-Consumer Rebate Strategies: What's Coming Next?
    • Analyze the Regulatory Criteria that your Generic Drug Candidate Must Meet
    • Establish R&D Methods & Timetables that will Streamline your Expansion to New Markets

    September 12 — Main Conference:
    • Outlook and Strategic Impact of U.S. Biosimilar Approval Pathway
    • Novel Nomenclature for Biosimilars:  What the Guidelines Say, and What You Need to Knowegulatory
    • Improve and Approve: Boost the Safety and Convenience of Biobetters, and Navigate the New Regulatory Environment
    • Building Product Awareness and Acceptance: What can Biosimilars and Generics Learn from One Another?
    • Preparing for IP Challenges: What Originators and Follow-On Companies Need to Know

    A brochure for this conference, including an agenda, list of speakers, and descriptions of the scheduled presentations can be downloaded here.

    IIRThe registration fee for this conference is $2,295 (conference only), $2,695 (conference and half day summit), or $2,995 (conference and full day summit).  Those registering before July 20, 2012 will receive a $400 discount, and those registering before August 17, 2012 will receive a $300 discount.  Those interested in registering for the conference can do so here, by calling 1-888-670-8200, or by sending an e-mail to customerserviceiir@informausa.com.

    Patent Docs is a media partner of the Business of Biosimilars & Generic Drugs conference.