• By James DeGiulio

    Elan and Abbott Drop Tricor Patent Suit with Teva

    Elan Elan and exclusive licensee Abbott have agreed to dismiss their case with Teva over its intended marketing of a generic version of the cholesterol drug Tricor.  The dispute between the companies began in July 2010, when Abbott, subsidiary Fournier, and Elan brought suit against Teva in the U.S. District Court for the District of New Jersey (see "Court Report," July 25, 2010) after Teva announced its plans to make a generic version of Tricor and filed an ANDA in May 2010.  The plaintiffs accused Teva of infringing U.S. Patent Nos. 5,145,684, 7,276,249, and 7,320,802.  Abbott's Fournier unit developed the drug's active ingredient and is the exclusive licensee of the patents, while Elan has developed a system for controlling how the drug is absorbed by the body.

    Teva #2 On June 30, Judge Garrett E. Brown signed off on the joint stipulation of dismissal between the parties.  Under the agreement, the complaint against Teva and all of the counterclaims were dismissed without prejudice.  According to the dismissal, no party admits liability and each will bear its own costs.  Elan and Abbott have steadily been wrapping up Tricor-related lawsuits in recent months, having settled with Biovail (now owned by Valeant), Lupin, and Ranbaxy.


    Sanofi Settles with Actavis in Allegra Suit

    Sanofi Sanofi and Actavis have settled a patent infringement suit over Actavis' planned generic version of the allergy drug Allegra.  In May 2010, Sanofi brought suit against Actavis in the U.S. District Court for the District of New Jersey, alleging that Actavis' planned generic version of Allegra would infringe three patents:  U.S. Patent Nos. 6,399,632, 6,187,791, and 6,037,353 (see "Court Report," June 6, 2010).  Actavis had previously sent Sanofi its notice letter in April 2010 announcing that it had filed an ANDA, and claiming that the three Sanofi patents were invalid or would not be infringed by the proposed generic drug.  Sanofi responded that not only would the generic version infringe the patents-in-suit, but that the infringement would be willful.  The complaint further sought damages and an injunction barring Actavis from selling generic Allegra.  Sanofi has been aggressive in protecting its patents for the medication, suing several generic makers for their efforts to introduce generic versions of the allergy drug.  However, many of these cases are drawing to a close.  In March, Sanofi settled a similar suit over generic Allegra with Impax, Mylan, and Dr. Reddy's.  That case had been pending since 2002.

    Actavis On June 30, Judge Garrett E. Brown signed off on an order of dismissal, which dismissed the action without prejudice, while retaining jurisdiction to enforce the terms of the settlement.  No costs were awarded to either side and the terms of the settlement were not disclosed.  The case can be reopened within 60 days if the settlement is not finalized.


    Wyeth and Intellipharmaceutics Settle Effexor XR Patent Litigation

    Wyeth Wyeth has settled its lawsuit against Intellipharmaceutics, which was filed when Intellipharmaceutics applied for regulatory approval to produce a generic version of the antidepressant drug Effexor XR.  The dispute between Wyeth and Intellipharmaceutics began in July 2010, when Wyeth filed suit in the U.S. District Court for the Southern District of New York against Intellipharmaceutics after its submission of an ANDA for a generic extended release version of venlafaxine HCl (see "Court Report," July 5, 2010).  Wyeth asked the District Court to find that Intellipharmaceutics had infringed U.S. Patent Nos. 6,274,171, 6,403,120, and 6,419,958.  Intellipharmaceutics responded by asserting that that patents were invalid and unenforceable.  As of July 2011, Wyeth has filed at least seventeen suits over Effexor XR since the drug was approved in 2000, and has settled over half of these suits.

    Intellipharmaceutics On June 20, Judge Laura Taylor Swain approved a stipulation of dismissal under Federal Rule 41 and a consent judgment.  According to the stipulation, all of the claims, counterclaims, and affirmative defenses are dismissed with prejudice.  No costs were awarded.  Although the companies' filings did not disclose the terms of the settlement, the judgment references a licensing agreement between the parties.  The judgment also stated that Intellipharmaceutics stipulated to the validity and enforceability of the three patents. 

  • By Donald Zuhn

    PPH Logo The U.S. Patent and Trademark Office recently announced the expansion or implementation of Patent Prosecution Highway (PPH) pilot programs with the Korean Intellectual Property Office (KIPO), Swedish Patent and Registration Office (PRV), Nordic Patent Institute (NPI), and Israel Patent Office (ILPO).  With the addition of these new pilot programs, the USPTO has now established PPH programs with eighteen Offices.  Currently the USPTO has PPH programs (full or pilot) in place with the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the United Kingdom Intellectual Property Office (UK IPO), the Canadian Intellectual Property Office (CIPO), IP Australia (IP AU), the European Patent Office (EPO), the Danish Patent and Trademark Office (DKPTO), the Intellectual Property Office of Singapore (IPOS), the German Patent and Trade Mark Office (DPMA), the National Board of Patents and Registration of Finland (NBPR), the Hungarian Patent Office (HPO), the Russian Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT), the Spanish Patent and Trademark Office (SPTO), the Austrian Patent Office (APO), the Mexican Institute of Industrial Property (IMPI), the Swedish Patent and Registration Office (PRV), the Nordic Patent Institute (NPI), and the Israel Patent Office (ILPO).


    USPTO and KIPO Expand PCT-PPH Program

    KIPO #2 On June 20, the U.S. Patent and Trademark Office announced that it was expanding its PPH pilot program utilizing Patent Cooperation Treaty results (PCT-PPH) with the Korean Intellectual Property Office (KIPO).  Under the previous USPTO-KIPO PCT-PPH pilot program, which began on June 1, 2010, only PCT work product generated by the KIPO could be used to enter the PPH at the USPTO.  Under the new pilot program, PCT work product generated by the USPTO can also be used to enter the PPH in KIPO.  Under the PCT-PPH framework, which was expanded on July 1, 2011 to cover PCT work product generated by both offices, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the USPTO or KIPO was the International Searching Authority or the International Preliminary Examination Authority may request that the other office fast track the examination of corresponding claims in corresponding applications.

    The expanded PCT-PPH pilot program is scheduled to expire on May 31, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  USPTO requirements for participation in the USPTO-KIPO PCT-PPH pilot program can be found here, and KIPO requirements can be here.


    USPTO and NPI Implement PCT-PPH Pilot Program

    NPI (Nordic Patent Institute) On June 20, the USPTO announced that it was implementing a new PCT-PPH pilot program with the Nordic Patent Institute (NPI) based on the NPI's PCT work products.  Under the new pilot program, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the NPI was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in corresponding applications.

    The USPTO-NPI PCT-PPH pilot program, which began on July 1, 2010, is scheduled to expire on June 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  USPTO requirements for participation in the USPTO-NPI PCT-PPH pilot program can be found here, and NPI requirements can be here.


    USPTO and ILPO Begin PPH Pilot Program

    ILPO On June 20, the U.S. Patent and Trademark Office announced that it had agreed to partner with the Israel Patent Office (ILPO) in establishing a PPH pilot program.  As with other PPH programs, the USPTO-ILPO PPH will permit an applicant having an application whose claims have been allowed in one of the offices to fast track the examination of an application in the other office, such that the latter application is examined out of turn.  In particular, an applicant receiving a ruling from either the ILPO or USPTO that at least one claim in an application is patentable may request that the other office fast track the examination of corresponding claims in the corresponding application in that office.

    The USPTO-ILPO PPH pilot program, which began on July 1, 2010, is scheduled to expire on June 30, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  USPTO requirements for participation in the USPTO-ILPO PPH pilot program can be found here, and ILPO requirements can be here.


    USPTO and PRV Initiate PCT-PPH Pilot Program

    PRV In May, the USPTO announced that it was implementing a new PCT-PPH pilot program with the Swedish Patent and Registration Office (PRV) based on PCT work products.  Under the new pilot program, an applicant receiving a positive written opinion or a positive international preliminary report in a PCT application where the PRV was the International Searching Authority or the International Preliminary Examination Authority may request that the USPTO fast track the examination of corresponding claims in corresponding applications.

    The USPTO-PRV PCT-PPH pilot program, which began on July 1, 2010, is scheduled to expire on May 31, 2013, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  USPTO requirements for participation in the USPTO-PRV PCT-PPH pilot program can be found here, and NPI requirements can be here.


    USPTO to Test Enhanced PPH Framework

    USPTO Seal On July 1, the USPTO announced that it would be testing an enhanced framework for its PPH programs with the Canadian Intellectual Property Office (CIPO), Japan Patent Office (JPO), IPAustralia, National Board of Patents and Registration of Finland (NBPR), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO) and United Kingdom Intellectual Property Office (UKIPO).  According to the USPTO announcement, the enhanced framework modifies certain PPH requirements to make the program easier to use and more widely available to a greater number of applicants.  In particular, PPH participation may be requested on the basis of results available on any patent family member from any office participating in the pilot, regardless of whether it was the office where the priority application was filed.  In addition, the enhanced program utilizes a new definition of claim correspondence, which the USPTO indicated would make the system more flexible and user-friendly without compromising efficiency or quality.  The enhanced PPH framework, which will go into effect on July 15, 2011, is scheduled to expire on July 14, 2012, but may be extended for up to one year or terminated earlier depending on volume of activity and other factors.  Additional information regarding the enhanced framework may be found here, and will be made available here.

  • By Kevin E. Noonan

    BIO International Convention Steve Burrill, President and CEO of Burrill & Co. took the stage at BIO 2011 in Washington, D.C. last Tuesday, and spent his 90 minutes in a brief retrospective of his 25 years in the biotechnology industry as well as his impressions and opinions on the current state of that industry.  Mr. Burrill's talk, entitled "Looking Back to See Ahead," was light on nostalgia and once again characterized by his trademark futuristic optimism.

    The program began with a video representation of the 25 preceding annual reports (now available on a CD-ROM for $95), followed by 75 minutes of Mr. Burrill describing the "labor of love" that has been his experience in financing biotechnology companies.  He dates the beginnings of commercial biotechnology with the creation of ALZA as a spinout from Syntex, but quickly moved to "original" biotechnology companies (Cetus/Genentech/Biogen/Genex) that came about in the late 1970's and early 1980's (followed of course by companies like Amgen, Genetics Institute, Genzyme, and others).  As he has previously, he credits biotechnology as being a solution to global problems of clean water, energy, and increased food production as well as its conventional role in health care (both diagnostics and therapeutics).  In this regard he presented a short reprise of last year's talk and predictions that he said turned out to be "mostly true."

    Burrilll, Steven The underlying theme of his message this year was that the predominant feature of the biotechnology environment is change, and rapid change.  Such change provides challenges but in characteristic fashion Mr. Burrill (at left) espoused the belief that change provides "extraordinary opportunities."  In this he answered the rhetorical question of whether the current situation is the prelude to biotech's greatest moment or its obituary, by saying that biotech's "greatest years are ahead of us."

    Turning to the financial state of the industry, Mr. Burrill noted that biotechnology companies had $100 billion in revenue over the past year and were "marginally profitable."  There are 400 public biotech companies in the U.S. (700 globally), with a $400 billion market cap.  Continuing a trend noted last year, he said that there have been 21 IPOs involving biotechnology companies in the past year, with $60 billion in equity capital raised (the most in any 12-month period).  This has raised Mr. Burrill's optimism level from last year's "cautious," based on the industry doing "pretty well" and deserving "pretty high marks" in the ensuing year.  He also noted that there has been "every form of merger and acquisition" in the past year, while mentioning that these included substantially more risk-taking by the biotechnology partner and that the time of "$100 million up-front payments" was over.  He included in this list "marquee acquisitions" of biotech companies by traditional pharmaceutical companies, and specifically mentioned as "seminal" Sanofi's acquisition of Genzyme and Roche's completion of its acquisition of Genentech (noting that Genentech's value based on the cost of the acquisition is greater than most existing pharmaceutical companies).  Mr. Burrill also said that an evolving trend was for big pharma companies to bypass startup biotechnology companies and directly "partner" with university professors for collaboration in drug development (a trend that may raise the significance of the Supreme Court's recent decision in Stanford v. Roche).

    With regard to the capital markets, Mr. Burrill said there was "plenty of capital — it's just hard to get."  Removing his tongue from his cheek, he noted the paradox that while the capital markets are not as "friendly" to biotech as they have been in the past, more capital has been raised in the past few years than ever before.  One difference is that more American companies are looking to foreign sources of capital, that angel investors are more important in markets outside the "coasts" (where VCs are still predominant sources) and that public and private equity capital are important sources of funding for biotechnology companies.  This may be related to the fact that, even in a recovering economy, biotechniology companies are outperforming the rest of the market, with midcap companies doing better than large cap companies (due, in part, to the higher percentage of midcap companies that are being acquired).

    The interrelationships between these different players in biotechnology innovation can be conceptualized as "co-opetition," a state where competitors strategically cooperate with one another while continuing to compete against one another; Silicon Valley is Mr. Burrill's paradigm for this situation.  He contrasted this with the traditional business model of big pharma, which he said was "not sustainable" and represented the "dinosaurs" of the industry (citing Pfizer's firing of 52,000 people over the past few years as evidence of this failure, and the reality that governments (in programs like Medicare) will be the payor for 80% of heathcare-related biotechnology products so that the need for detailers has decreased dramatically and permanently).  Answering his own rhetorical question, "the money," Mr. Burrill said, is in cancer treatment as well as central nervous system disorders and cardiovascular diseases.  Paradoxically, while praising the efforts of the Human Genome Project (HGP) for "increasing the tools in our toolbox" (for both humans and other species), drug development based on the HGP has failed most of the time.  Also, there remains inefficient translation of academic research to commercial R&D (characterizing current big pharma efforts as "search and development" with regard to the trend to "outsource" research to startups and academic researchers).  In addition, Mr. Burrill said that FDA approvals are decreasing at the same time that the investment needed to obtain approval is increasing:  in 1975, a new drug could be developed and approved (on average) for about $150 million and could take about 7 years.  Today, the cost is $1.5 to 2 billion and it takes 15-17 years.  As a consequence, there is "no time" to recover investment of traditional R&D, leaving "no time" for research and generating the need to acquire rather than develop new drugs.  The upshot of these trends make Mr. Burrill skeptical that there will be cures or drugs for cancer (and other diseases of aging).  This is a problem insofar as 80% of healthcare costs (in the U.S. and worldwide) are expended in end-of-life care, and as he has over the past several years Mr. Burrill recommends that the healthcare system (and the biotech industry) focus on wellness, prevention, and the development of products effective for predictive/preventative care.  The increased costs associated with both treatment and prevention must be addressed by innovation or rationed care will be a "reality" worldwide.

    Mr. Burrill also repeated a theme common to many of his recent "state of the industry" reports, that the U.S. is being overshadowed by the developing world.  In addition to the "traditional" BRICs countries (Brazil, Russia, India, China, and South Africa), Mr. Burrill added the CIVET countries (Columbia, Indonesia, Vietnam, Egypt, and Turkey) as sources of increased international competition for innovation, markets, and capital.  The world is a "flat, interconnected, borderless marketplace" with an "exploding middle class spending massively in healthcare," he said.  The U.S. is becoming less important and is no longer the economic engine of the world; we are also facing trade friction and regulatory restriction due to most countries erecting barriers to protect their local industry.  Mr. Burrill also mentioned greater levels of political instability coupled with the tendency for the developing world building their economies with biotechnology that is based on (or frankly uses) U.S.-developed technology.  As a consequence, he said there is "increased commoditization of products" (meaning biotech companies need to understand branding as a source of building market advantage), increasing transparency, decreased cycle times, shrinking margins, and limited supply chains (i.e., by reducing the overall number of suppliers).  In the face of this new "reality," "investor expectations are not sustainable" and managers need vision, global insight, and the ability to manage ambiguity and virtuality:  success, according to Mr. Burrill, means management must be less hierarchical, capable of balancing short term and long term goals, and require a different managerial skill set that is capable of managing social media and dealing with increased changes in regulatory requirements both here and abroad.  "Better and faster and cheaper" was his mantra, and he used the video gaming industry and Twitter as examples of a different type of value capture (where the company essentially "gives away" product and makes money on creating value "outside" the product).

    There is plenty of opportunity for this value creation in biotechnology according to Mr. Burrill, in a world of population growth, an increasingly middle class and aging world population.  Mr. Burrill reminded the audience that the world population will exceed 7 billion by October, 2011 and reach 9.0 to 9.5 billion by 2050; China has 250 million people aged 65 and over.  World economies are growing with world population:  India will be the 5th largest economy soon, and Brazil the 5th largest population (and has the world largest development agency).  The proportion of biotech/pharma sales in developing countries was 13% in 2001 and will soon be greater than 50%.  The U.S. is behind these countries in almost every measure of future innovation, Mr. Burrill stated, including publication of scientific papers, investment, and development of cutting-edge technologies such as stem cells.

    A new theme this year was the impact (and lessons) of social media and their effects on the biotechnology business model.  Social media is "changing nature of what we do," Mr. Burrill said, including and perhaps most importantly how biotechnology companies do business.  He reminded the audience that many of the companies that are the face of social media are relatively new:  Google is less than 20 years old, Facebook less than 7 years old, Twitter less than 5 years old.  These companies do not fit traditional competition models, supporting Mr. Burrill's thesis that "connectivity changes everything" and "innovation is connectivity."  Part of Mr. Burrill's message in this regard relates to his earlier "into the future" speculations, such as diagnostics built into cell phones (where you'll spit on a spot on a cell phone and have the genetic or other diagnostic information transmitted to your physician, for example).  But he included the reality of 10,000 apps for the iPhone and the likelihood that more and more apps will be developed to interface "consumer digital health."  This will implicate different companies (such as Intel, Cisco, Google, Microsoft, and Apple) that can be expected to get involved in healthcare.  It will also implicate "patient empowerment" as well as structural costs:  there may be less traditional investment, for example, in hospitals and more in "Walmart medicine" where healthcare has been decentralized and commoditized.  He also mentioned the effects that social media are having on conventional clinical trials, where connectivity between patients creates problems with "blinded" trials, and the traditional emphasis on patient privacy have crumbled in the face of mobile phones and global interconnectivity.

    Mr. Burrill spent the last 10 minutes of his talk on fuels, genetically modified foods, and the application of biotechnology to the problem of supplying clean water, saying that the industry can "us[e] the same toolbox" as applied to healthcare.  Energy (biofuels) and agriculture are being "transformed" by biotechnology, he said, but acknowledged that there was a great deal of "misinformation" about the differential allocations of resources for creating food versus biomass for biofuel production.

    In conclusion, Mr. Burrill provided a cornucopia of concepts characterized by the letter "c," including co-opetition, confluence, commercialization, and customers, cultures, creativity, and change.  He said that science was moving "faster than anyone thought it would" and that the future was in leveraging the "enormous premium" of virtuality and connectivity to fuel innovation.  He predicted "more change in next 10 years than from the beginning of time, in a globally connected virtual world of informed consumers."  He sounded quite excited by the idea.

    The complete Burrill Report can be purchased from Burrill & Co.; sales at BIO 2011 include access to the company website for Mr. Burrill's presentation slides.

  • By Sherri Oslick

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

    Endo Pharmaceuticals Inc. v. Watson Laboratories Inc. et al.
    1:11-cv-00575; filed June 29, 2011 in the District Court of Delaware

    • Plaintiff:  Endo Pharmaceuticals Inc.
    • Defendants:  Watson Laboratories Inc.; Watson Pharmaceuticals Inc.; Watson Pharma Inc.

    Infringement of U.S. Patent Nos. 5,741,510 ("Adhesive Patch for Applying Analgesic Medication to the Skin," issued April 21, 1998), 6,096,333 ("Method of Forming Adhesive Patch for Applying Medication to the Skin," issued August 1, 2000), and 6,096,334 ("Adhesive Patch for Applying Medication to the Skin and Method," issued August 1, 2000), all licensed to Endo, following a Paragraph IV certification as part of Watson's filing of an ANDA to manufacture a generic version of Endo's Lidoderm® (lidocaine patch, used to treat after-shingles pain).  View the complaint here. 


    ViiV Healthcare UK Ltd. et al. v. Lupin Ltd. et al.

    1:11-cv-00576; filed June 29, 2011 in the District Court of Delaware

    • Plaintiffs:  ViiV Healthcare UK Ltd.; ViiV Healthcare Co.
    • Defendants:  Lupin Ltd.; Lupin Pharmaceuticals Inc.

    Infringement of U.S. Patent No. 6,417,191 ("Synergistic Combination of Zidovudine, 1592U89 and 3TC," issued July 9, 2002) following a Paragraph IV certification as part of Lupin's filing of an ANDA to manufacture a generic version of ViiV's Trizivir® (abacavir sulfate, lamivudine, and zidovudine, used to treat HIV infection in humans).  View the complaint here.


    Somaxon Pharmaceuticals Inc. v. Mylan Inc. et al.

    1:11-cv-00571; filed June 28, 2011 in the District Court of Delaware

    • Plaintiff:  Somaxon Pharmaceuticals Inc.
    • Defendants:  Mylan Inc.; Mylan Pharmaceuticals Inc.

    Infringement of U.S. Patent No. 7,915,307 ("Methods of Improving the Pharmacokinetics of Doxepin," issued March 29, 2011) following Mylan's filing of an ANDA to manufacture a generic version of Somaxon's Silenor® (doxepin, used to treat insomnia).  View the complaint here.


    Hoffman-La Roche Inc. v. Accord Healthcare Inc. et al.

    2:11-cv-03663; filed June 27, 2011 in the District Court of New Jersey

    • Plaintiff:  Hoffman-La Roche Inc.
    • Defendants:  Accord Healthcare Inc.; Intas Pharmaceutical Ltd.

    Hoffmann-La Roche Inc. v. Teva Pharmaceuticals USA, Inc. et al.
    2:11-cv-03635; filed June 23, 2011 in the District Court of New Jersey

    • Plaintiff:  Hoffmann-La Roche Inc.
    • Defendants:  Teva Pharmaceuticals USA, Inc.; Teva Pharmaceuticals Industries Ltd.

    Hoffmann-La Roche Inc. v. Roxane Laboratories, Inc.
    2:11-cv-03637; filed June 23, 2011 in the District Court of New Jersey

    The complaints in these cases are substantially identical.  Infringement of U.S. Patent No. 5,472,949 ("N4-(Substituted-Oxycarbonyl)-5'-Deoxy-5-Fluorocytidine Compounds, Compositions and Methods of Using Same," issued December 5, 1995) following a Paragraph IV certification as part of Teva's filing of an ANDA to manufacture a generic version of Roche's Xeloda® (capecitabine, used to treat breast and colorectal cancer and Dukes' C Stage III colon cancer).  View the Teva complaint here.


    Pfizer Inc. et al. v. Aurobindo Pharma Ltd. et al.

    1:11-cv-00569; filed June 27, 2011 in the District Court of Delaware

    • Plaintiffs:  Pfizer Inc.; Pfizer Ireland Pharmaceuticals; Warner-Lambert Co.; Warner-Lambert Co. LLC
    • Defendants:  Aurobindo Pharma Ltd.; Aurobindo Pharma USA Inc.

    Infringement of U.S. Patent No. 5,969,156 ("Crystalline [R- (R*,R*)]-2-(4-Dfluorophenyl)-β,δ-dihydroxy-5-(1-methylethyl)- 3-phenyl-4-[(phenylamino)carbonyl]-1H-pyrrole-1-heptanoic acid hemi calcium salt (atorvastatin)," issued October 19, 1999) following a Paragraph IV certification as part of Aurobindo's filing of an ANDA to manufacture a generic version of Pfizer's Lipitor® (atorvastatin calcium, used to treat high cholesterol and heart disease).  View the complaint here.

     

    AstraZeneca LP et al. v. Watson Laboratories, Inc.
    1:11-cv-03626; filed June 23, 2011 in the District Court of New Jersey

    • Plaintiffs:  AstraZeneca LP; AstraZeneca AB
    • Defendant:  Watson Laboratories, Inc.

    Infringement of U.S. Patent Nos. 6,598,603 ("Method for Treating Respiratory Diseases," issued July 29, 2003) and 7,524,834 ("Sterile Powders, Formulations, and Methods for Producing the Same," issued April 28, 2009) following a Paragraph IV certification as part of Watson's filing of an ANDA to manufacture a generic version of Astrazeneca's Pulmicort Respules® (budesonide inhalation suspension, used to treat asthma).  View the complaint here.

  • Calendar

    July 7, 2011 – Inequitable Conduct after Therasense (Intellectual Property Owners Association) – 2:00 PM (ET)

    July 8, 2011 – Stanford v. Roche: The Impact on Management of University IP (Technology Transfer Tactics) – 1:00 – 2:00 PM (Eastern)

    July 16-19, 2011 – 2011 Annual Meeting; The Nuts & Bolts of Patent Prosecution Practice; and 2011 Patent Practice Update (National Association of Patent Practitioners) – Las Vegas, NV

    July 18-19, 2011 – Hatch-Waxman Boot Camp*** (American Conference Institute) – San Diego, CA

    July 20-21, 2011 – Advanced Forum on Life Sciences Collaborative Agreements and Acquisitions*** (American Conference Institute) – San Francisco, CA

    July 25-27, 2011 – Intensive Patent Law Seminar (Chisum Patent Academy) – Seattle, WA

    July 26, 2011 – The New Inequitable Conduct Standard in Patent Litigation: Asserting and Defending Inequitable Conduct Challenges After the Landmark Therasense Decision (Strafford) – 1:00 – 2:30 PM (EDT)

    August 4-7, 2011 – 2011 Annual Meeting (American Bar Association) – Toronto, Ontario

    August 15-19, 2011 – Intellectual Property Law Summer School 2011 (IBC Legal) – Cambridge, UK

    August 16-18, 2011 – The Bilski Impact: Procuring & Enforcing Software, Business Methods & Bioinformatics Patents (Patent Resources Group) – Alexandria, VA and Southfield, MI

    September 11-13, 2011 – 2011 Annual Meeting (Intellectual Property Owners Association) – Los Angeles, CA

    September 18-20, 2011 – Accelerating Intellectual Property and Innovation in South Africa*** (South African Department of Science and Technology) – Cape Town, South Africa

    September 22-23, 2011 – FDA Boot Camp*** (American Conference Institute) – Boston, MA

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

  • Boston Skyline American Conference Institute (ACI) will be holding the Boston edition of its FDA Boot Camp conference on September 22-23, 2011 in Boston, MA.  ACI faculty will help attendees:

    • Master the basics of the application and approval processes for drugs, biologics, and devices;
    • Comprehend the structure of the FDA and the roles of the three major agency centers:  CDER, CBER, and CDHR;
    • Develop a practical working knowledge of clinical trials for drugs and biologics and the clearance process for devices;
    • Learn how devices are classified, monitored, and regulated;
    • Appreciate the complexities of pharmaceutical IP and the regulatory balance between brand name and generic products;
    • Recognize the pivotal role of labeling in the drug and biologics approval process;
    • See the importance of cGMPs to the post-approval regulatory process; and
    • Navigate the protocols of adverse events monitoring, signal detection, product withdrawals, and recalls.

    Brochure In particular, ACI's faculty will offer presentations on the following topics:

    • The basics:  Understanding and working with the FDA — Jurisdiction, functions, organization, and operation;
    • The nature of the approval process;
    • Understanding the clinical trial process for drugs and biologics;
    • IP overview for drugs and biologics:  Hatch-Waxman, BPCIA, trade dress, and more:
        • Part 1 — Overview of patent and trademark issues;
        • Part 2 — Hatch-Waxman and BPCIA overview;
    • Drugs and biologics:  Labeling;
    • cGMPs:  Drugs and biologics (current good manufacturing practices);
    • Adverse events monitoring, pharmacovigilance and risk management;
    • Medical devices:  Classifications, the essentials of the premarket review process, and post-market requirements and concerns; and
    • Recall guidance for drugs, biologics, and medical devices:  What you need to know.

    A pre-conference workshop on the "Fundamentals of FDA Regulatory Law," will be offered on September 21, 2011.  The workshop will provide a basic overview of FDA regulations and will prepare attendees for the in-depth discussions that will take place throughout the conference.

    Two post-conference master classes will be offered on September 23, 2011.  The first master class, entitled "Hatch-Waxman and BPCIA: Overview of Biosimilars and Life Cycle Planning for Drugs and Biologics," will provide an in-depth overview of biosimilars as well as analyses of bioequivalence and exclusivities and their role in patent and product life cycle management.  The second master class, entitled "Post-Approval Marketing Guidance and Preemption Protocols," will address issues that arise post-approval, including advertising, promotion, and off-label promotion and enforcement, as well as preemption fundamentals.

    A complete brochure for this conference, including an agenda, detailed descriptions of conference sessions, list of speakers, and registration form can be obtained here.

    ACI - American Conference Institute The registration fee is $2,295 (conference alone), $2,895 (conference and workshop or conference and one master class), or $3,295 (conference, workshop, and one master class).  Those registering by July 22, 2011 will receive a $300 discount and those registering by August 26, 2011 will receive a $200 discount.  Those interested in registering for the conference can do so here, by calling 1-888-224-2480, or by faxing a registration form to 1-877-927-1563.

    Patent Docs is a media partner of ACI's FDA Boot Camp conference.

  • IPO #2 The Intellectual Property Owners Association (IPO) will offer a one-hour webinar on "Inequitable Conduct after Therasense" on Thursday, July 7, 2011 beginning at 2:00 PM (ET).  The IPO webinar will bring three different perspectives to bear on the Federal Circuit's decision that revamped the doctrine of inequitable conduct, including the standard for materiality.  The panel, which includes Charles Van Horn of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Kevin Rhodes of 3M Innovative Properties Co., and Eric Weisblatt of Wiley Rein, will address the following questions:

    • How should patent prosecutors change their dealings with the USPTO?
    • What will be the USPTO's reaction to the Federal Circuit's new standards?  Will it change its guidance to applicants regarding the materials they must submit under their duty of disclosure?
    • Will patent prosecutors omit relevant references and hide information?
    • What will be the impact on patent quality?
    • Will the Therasense holding lower the cost and complexity of patent litigation?
    • Will the "but for" invalidity analysis require district courts to apply the USPTO standards for allowing patents?

    The registration fee for the webinar is $120 (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

  • "Biotech/Pharma Top 50 (plus 6)"

    By Donald Zuhn

    IPO #2 The Intellectual Property Owners Association (IPO) released its 28th annual list of the top 300 organizations receiving U.S. patents.  Patent Docs Readers may recall that the U.S. Patent and Trademark Office stopped releasing its annual list of top patent recipients in 2006 in order to "discourag[e] any perception that we believe more is better."

    The IPO stated that while it does not intend for the report to "encourage or discourage patenting," it would continue to publish its annual list of top recipients because "the number of patents granted is one of the few objective measures of the patent system as a whole and the patenting activities of individual industries and companies."  The IPO compiled its list by counting the number of utility patents granted during 2010 on which an organization or its subsidiary was listed as the owner on the face of the patent.  However, the IPO attributed patents that were granted to two or more organizations jointly to the organization listed first on the patent.  The IPO noted that 207,915 patents were issued in 2010, which was an increase from the 165,213 patents that issued in 2009.  The top fifteen companies on the IPO Top 300 are listed below

    2010 Top 15
    As in past years, Patent Docs used the IPO's list of top patent holders to compile a list of the top "biotech and pharma" companies and organizations receiving U.S. patents in 2010.  This year's list of 56 biotech and pharma companies and organizations continues to reverse a downward trend that saw the number of biotech and pharma companies and organizations drop from 51 in 2006 to 47 in 2007 to 43 in 2008 before rising to 47 last year.  Each organization's IPO top 300 ranking for 2010 is indicated in the "'10 IPO Rank" column; the IPO top 300 ranking for 2009 (if available) is indicated in the "'09 IPO Rank" column.  Biotech and pharma companies and organizations that failed to make the IPO top 300 in 2010 after making it in 2009 included Cardiac Pacemakers, Inc. (#121 on the IPO top 300 for 2009), Battelle Memorial Institute (157), Zymogenetics, Inc. (242), and Eli Lilly and Co. (258).

    Please note that some of the companies and organizations listed below may be involved in non-biotech or non-pharma work, and therefore, a portion of the patents granted to these companies and organizations may be directed to other than biotech and pharma-related inventions.  In addition, our list is a little inclusive in that we included medical device companies.

    2010 Top 56

    For additional information regarding this topic, please see:

    • "IPO Releases List of Top 300 Patent Holders for 2009," May 26, 2010
    • "IPO Releases List of Top 300 Patent Holders for 2008," May 14, 2009
    • "IPO Releases List of Top 300 Patent Holders," May 22, 2008
    • "IPO Posts List of Top 300 Patent Holders," April 20, 2007

  • By Sherri Oslick

    BIO International Convention On Tuesday morning, attendees at the BIO International Convention had the opportunity to attend a session entitled "The Myriad Case and the Patentability of Isolated DNA Molecules," presented by the team from Wilmer Hale that submitted a joint amicus curiae brief to the Federal Circuit on behalf of BIO and the Association of University Technology Managers (AUTM) (see "BIO and AUTM File Joint Amicus Brief in AMP v. USPTO").  The presentation was well organized and well presented, and struck a balance so as to appeal to both those familiar with the case as well as those who may not have been.  The slides from the presentation can be found here.

    The session was introduced by Seth Waxman, former Solicitor General of the United States.  Mr. Waxman noted that there is relatively little law with regard to the patentability of isolated and purified DNA molecules, and that while the USPTO struggled with the standards for examining applications claiming such molecules, ultimately the USPTO issued generally permissive guidelines.  The Myriad case was described by Mr. Waxman as a "frontal challenge" to the patentability of isolated and purified DNA molecules.

    Myriad Mark Fleming provided the historical context of the case, which involves fifteen claims in seven patents covering isolated DNA molecules linked to breast cancer (BRCA1/BRCA2), including methods for detecting mutations in these genes.  The claims at issue were challenged on three grounds, two constitutional grounds and the primary ground of patentability under 35 U.S.C. § 101.  As Mr. Fleming pointed out, the parties named as plaintiffs in the case were well thought out by the ACLU, the entity behind the suit.  There were four medical associations (led by AMP), eight physicians, two advocacy groups, and six patients who claimed they were unable to access the test for BRCA1/BRCA2 mutations due to Myriad's patents.  Defendants included the patent owner (University of Utah Research Foundation) and Myriad Genetics as the exclusive licensee, and the USPTO, whose involvement was limited to the constitutional issues.

    The case was decided on summary judgment by Judge Sweet of the Southern District of New York with a 153 page opinion finding the claims unpatentable.  Judge Sweet's opinion centered around two basic principles:  1) that purification of a naturally occurring substance is not patentable; 2) however, if the naturally occurring substance is transformed and has "markedly different characteristics" from a product of nature, it is patentable subject matter.  DNA, according to Judge Sweet's opinion, "carries genetic information" and is "the physical embodiment of laws of nature."  In other words, isolated DNA is not different from naturally occurring DNA, and it is the fact that isolated DNA (like natural DNA) is a carrier of information that makes it useful, not the fact that it is isolated.  As to the remaining issues, the method claims were found invalid under Bilski, the constitutional claims were dismissed without prejudice, and the challenge to plaintiffs' standing was rejected.

    ACLU On appeal to the Federal Circuit, Mr. Fleming noted that the U.S. government took a Solomonic approach in its position, splitting the baby as it were, such that some DNA (engineered, including cDNA) was patentable and some (isolated and unmodified) was not.  This, as Mr. Fleming advised, marked a radical change in the government's position, and in fact the government, who co-owned four of the seven patents at issue, was arguing that its own patents were invalid.

    Allen Nunnally followed Mr. Fleming and presented the position of BIO in its amicus brief on the issue on appeal of the patentability of composition claims to isolated DNA molecules.  BIO argued that both isolated DNA as well as cDNA was patentable, noting that § 101 of the Patent Act is broad and is only meant to be a threshold test to exclude laws of nature, physical phenomena, and abstract ideas.  Isolated DNA molecules, in BIO's view, represent new compositions of matter that do not exist in nature, are clearly transformed (separated from carrier proteins, covalent bonds broken, etc.), and which differ from their natural counterparts; cDNA represents an even greater difference from naturally occurring DNA.  As to the District Court's interpretation of DNA as "information," BIO noted that such a characterization was mere metaphor, and that, simply put, isolated DNA molecules were chemical compositions of matter.  Further discussion centered on BIO's position that isolated DNA patents would not discourage innovation, that invalidating isolated DNA patents would have far-reaching negative consequences, and that isolated DNA patents do not impede research or harm patients.

    Following Mr. Nunnally, Tom Saunders offered a lively presentation on the oral arguments in the appeal, held on April 4, 2011 with Judges Lourie, Bryson, and Moore on the panel.  On the issue of the plaintiffs' standing to sue, the panel focused its inquiries on the adequacy of the affidavits used to establish standing.  Mr. Saunders indicated that there was little relationship between the focus in oral arguments at the Federal Circuit and the focus at the District Court level, including a minimal focus at the Federal Circuit on the idea of DNA as information.  Oral argument was dominated by hypotheticals, including those trying to analogize the isolated aspect of the claimed DNA molecules.  Questions from the panel revealed that the judges were struggling on where to draw the line, where their opinion might have very far reaching implications without knowing what those implications might be.  Overall, it was Mr. Saunders' assessment that the panel was leaning toward keeping the USPTO's precedent in finding isolated DNA molecules to be patentable.

    Looking forward, with almost certainty there will be a request for rehearing en banc, followed by a petition for certiorari to the Supreme Court (all panel members agreed that the plaintiffs structured the case with the ultimate goal of Supreme Court review), and the possibility of Congress taking up the issue.

    Overall, this BIO International Convention breakout session provided a well organized and balanced summary of the Myriad case from start to today, as we await a decision from the Federal Circuit.

    Finally, Patent Docs would like to thank Mr. Saunders for providing access to the presentation slides, for allowing them to be shared with our readers, and for mentioning Patent Docs during the presentation.

    For additional information regarding the AMP v. USPTO ("Myriad") case, please see:

    • "AMP v. USPTO: Oral Argument at the Federal Circuit," April 4, 2011
    • "Federal Circuit to Hear Argument in AMP v. USPTO," April 3, 2011
    • "Curiouser and Curiouser," February 16, 2011
    • "AMP v. USPTO — Briefing Update III," February 8, 2011
    • "Amicus Briefs in AMP v. USPTO: AARP," January 27, 2011
    • "AMP v. USPTO: Appellees' Brief," January 12, 2011
    • "AMP v. USPTO — Briefing Update II," December 16, 2010
    • "Amicus Briefs in AMP v. USPTO: Alynylam Pharmaceuticals, Inc.," December 15, 2010
    • "The Relevance of Patent Exhaustion in the Myriad Genetics Case," December 14, 2010
    • "AMP v. USPTO — Briefing Update," December 14, 2010
    • "Amicus Briefs in AMP v. USPTO: University of New Hampshire School of Law," December 12, 2010
    • "Amicus Briefs in AMP v. USPTO: Rosetta Genomics & George Mason University," December 8, 2010
    • "Academic Amici Refute ACLU Falsehoods in Gene Patenting Debate," December 7, 2010
    • "Amicus Briefs in AMP v. USPTO: Genetic Alliance," November 10, 2010
    • "BIO and AUTM File Joint Amicus Brief in AMP v. USPTO," November 9, 2010
    • "AIPLA Submits Amicus Brief in AMP v. USPTO," November 3, 2010
    • "IPO Files Amicus Brief in AMP v. USPTO," November 2, 2010
    • "AMP v. USPTO — Briefing Update," November 1, 2010
    • "DOJ Tries to Be All Things to All Constituencies in Myriad Amicus Brief," October 31, 2010
    • "Myriad Files Appeal Brief in AMP v. USPTO," October 28, 2010
    • "AMP v. USPTO — Briefing Schedule Update," August 22, 2010
    • "FCBA Submits Amicus Brief on Motion for Recusal in AMP v. USPTO," August 9, 2010
    • "Appellees Move for Recusal of Chief Judge Rader in AMP v. USPTO Appeal," July 19, 2010
    • "AMP v. USPTO after Bilski v. Kappos," July 6, 2010
    • "Myriad Appeals AMP v. USPTO Decision," June 16, 2010
    • "AMP v. USPTO: What Everyone Else Is Saying – Part II," June 8, 2010
    • "AMP v. USPTO: What Everyone Else Is Saying," April 6, 2010
    • "'60 Minutes' and 'Newshour' Take Different Approaches to Covering Gene Patenting Story," April 5, 2010
    • "'60 Minutes' Examines Gene Patenting Issue on Sunday, April 4th — Patent Docs Author Kevin Noonan to Appear on Program," April 2, 2010
    • "AMP v. USPTO: What the Parties Are Saying About the Decision," April 1, 2010
    • "Caught in a Time Warp: The (In)validity of BRCA1 Oligonucleotide Claims," March 30, 2010
    • "Round One Goes to the ACLU," March 29, 2010
    • "USPTO Asks out of Gene Patenting Case (Again)," January 19, 2010

  • By Kwame Mensah

    Antisense Pharma Earlier this month, Antisense Pharma, GmbH, a biopharmaceutical company located in Regensburg, Germany, announced the issuance of U.S. Patent No. 7,963,956, entitled "Portable equipment for administration of fluids into tissues and tumors by convection enhanced delivery technique," which is directed to Convection Enhanced Delivery (CED).  CED is being touted as an application system for long-term and outpatient administration of therapeutic substances into brain tissue.  The portable system was specially developed for the treatment of brain tumor patients using Antisense Pharma's drug Trabedersen.  Patents in Europe, Canada, Japan, and India, with additional patents being pursed worldwide, also cover CED.

    Dr. Karl-Hermann Schlingensiepen, Chief Executive Of­ficer of Antisense Pharma, stated that CED provides a solution to "[t]he dif­ficulty of administering a therapeutic dose of a pharmacologically effective substance into the brain tissue due to the very small number of substances capable to pass the blood-brain barrier."  Dr. Schlingensiepen further stated that this difficulty "is one of the main reasons for the currently very few therapy options we can offer to brain tumor patients."  Antisense Pharma explains that CED uses a special infusion technology that provides a high and uniform concentration of active substances in the brain tissue — even at a distance from the place of infusion.  The company explains further, that the substance is administered directly into the tumor or the surrounding brain tissue using a permanent, pressure-supported infusion using a special catheter/pump system.  It concludes that since CED builds up a pressure gradient, a clearly higher and more homogeneous penetration volume can be achieved compared to conventional diffusion.

    Dr. Hubert Heinrichs, Chief Medical Of­ficer at Antisense Pharma, explains that with the development of the first portable, and now patented CED application system, "[t]he option of a CED-based treatment using a portable application system over weeks and months could well stimulate the development of urgently required neurotherapeutics."

    The CED consists of several harmonized components.  After the catheter has been stereotactically placed in the tumor, the drug is administered via an infusion line using an external, programmable, portable pump.  The implantation of the catheter is a neurosurgical intervention, which is geared to the placement of a shunt for hydrocephalus patients where excessive brain liquid is diverted into the blood circulation.  The brain catheter is inserted through the skin to a port chamber, which is usually placed in the chest muscle.  The chamber is then connected to an external infusion line, which in turn is connected to a small, portable infusion pump that can easily be attached to the belt.  Dr. Schlingensiepen summarizes that:

    Using this application system, we are able to administer highly effective drugs, by-passing the blood-brain barrier.  At the same time, we allow patients to continue living their normal lives during the therapy:  once the catheter system has been positioned, no extensive hospitalization is required.  The total 5-month treatment using Trabedersen provides patients with maximum mobility and quality of life.

    Key claims encompass the CED apparatus itself and a method of use for the apparatus to treat a number of cancer tumors.