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Entries for tag: ANDA

Judge Wolson Rejects Attempt to Limit Deposition Discovery & Force Remote Depositions in ANDA Action

Andrew E. Russell, Sept. 10, 2023
Remote Depositions Depositions

An attorney's view after many a deposition—if you're lucky enough to catch a flight back that night.
An attorney's view after many a deposition—if you're lucky enough to catch a flight back that night. Eva Darron, Unsplash

This On Friday, Judge Wolson addressed—and rejected—an effort by an ANDA defendant to limit deposition discovery on the basis that discovery is, in its view, just not that important in an ANDA action. As set they put it:

This is an ANDA case. Black letter law holds that the infringement issues in an ANDA case are controlled by the ANDA itself. . . . Months ago, Defendants produced the ANDA and ANDA product samples from which the relevant infringement analysis must be derived. Plaintiff has now noticed the deposition of both Defendants and seven individuals. But the information that …
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An ANDA Trend?

Nathan R. Hoeschen, June 27, 2023
ANDA

Drug patents are legion, and they are prone to flock together. In ancient times, a patent would describe A molecule that cured . . . the dancing plague (?) and that would be the end of that. But one bright fellow after another came up with new ways to extend the life of a drag patent, from formulation, to method of treatment, to the new hip thing -- interaction patents.

The gist of these patent claims is pretty basic

  • You've got a drug that you normally give in amount A.
  • You've got atypical patient with whose taking drug B, or has condition C (these pretty much always have something to do with the liver, don't ask me why, I was …
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Court Rejects "Unprecedented" Request to Modify Judgment Based on Amended ANDA

Andrew E. Russell, May 19, 2023
ANDA FRCP 60

Undo Button
Sergi Kabrera, Unsplash

On Wednesday, Judge Andrews issued an order in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals, Inc., C.A. No. 20-430-RGA (D. Del. May 17, 2023) rejecting an attempt to evade judgment in an ANDA action based on the filing of an amended ANDA.

The defendant in the case had won on one method of treatment, and lost on the other. It filed an amended ANDA seeking to remove the infringing treatment from the label:

Defendant filed an ANDA seeking to make and market a drug for two different methods of treatment-the IBS-D indication and the HE indication. I had a bench trial. After trial, I ruled in Defendant's favor on the IBS-D indication (as …
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Chief Judge Connolly Dismisses Claims on Patents Withdrawn Prior to ANDA Trial with Prejudice

Andrew E. Russell, Oct. 24, 2022
Trial ANDA

"Do you think 11 patents might be more than we need? Nah" Maciej Ruminkiewicz, Unsplash

Back in May, we wrote about an order by Chief Judge Connolly directing an ANDA plaintiff to cut back to 4 claims prior to trial, or potentially face a more difficult road for injunctive relief.

Plaintiff cut back to 6 claims, apparently dropping five patents from the case, and the bench trial proceeded.

Last month, Chief Judge Connolly issued his post-trial opinion regarding infringement and invalidity, and directed the parties to enter a proposed order. The parties ended up disputing what should happen to those dropped claims from the five dropped patents in the final judgment:

The proposals differ with respect to the disposition …
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Chief Judge Connolly Warns ANDA Plaintiff to Cut Back from 16 to 4 Asserted Claims Before Trial or Face Consequences

Andrew E. Russell, May 16, 2022
ANDA Congestion

Four
David Pisnoy, Unsplash

On Friday, Chief Judge Connolly issued an order in the lead-up to an ANDA bench trial compelling the plaintiff to reduce its number of asserted claims by 75% to 4 claims, or face consequences:

ORAL ORDER: WHEREAS, the parties filed the proposed pretrial order (D.I. 225) on May 10, 2022; WHEREAS, the bench trial in this case is 24 days away, and, according to the pretrial order, Plaintiffs are still asserting 15 claims across eight patents . . . ; and WHEREAS, Plaintiffs' assertion of 15 claims across eight patents at this juncture makes clear that Plaintiffs have yet to focus adequately on the relative strength of their various infringement claims, the limited resources of …
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Judge Connolly Crosses the Delaware

Nathan R. Hoeschen, April 27, 2022
ANDA Scheduling Order

Delaware Memorial Bridge
Chintan Jani, Unsplash

Observant readers will have noticed that the new scheduling orders Chief Judge Connolly unveiled last week were specifically for non-Hatch-Waxman cases, and perhaps deduced that further orders for ANDA cases would be forthcoming. Well, the wait is over.

The new Hatch-Waxman case order, released yesterday, contains many of the same updates as the orders from last week, including a procedure for ranking Daubert motions, the tweaks to claim construction procedures, and the requirement for colored covers on courtesy copies. All to be expected given the changes last week.

Early Case Narrowing

The big change was that the new scheduling order includes a staged procedure for narrowing asserted claims and prior art. The first such stage begins just 7 days after the scheduling conference:

No later than seven days after the date of this Order, Plaintiff(s) shall serve Defendant(s) with a "Preliminary Disclosure of Asserted Claims" that lists each claim of each patent alleged to be infringed by Defendant(s), including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted. Unless otherwise agreed to by the parties, Plaintiff(s) may assert no more than ...
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Judge Connolly Issues New Standing Orders, Including Requirement to Disclose Litigation Funding

Andrew E. Russell, April 18, 2022
Standing ANDA

Standing Stones
Andreas Brunn, Unsplash

Today, Judge Connolly issued four new standing orders. These orders include:

  1. A requirement to disclose third-party litigation funding arrangements on the docket;
  2. A requirement in diversity cases to disclose the name and citizenship of every individual and corporation with a direct or indirect interest in every party;
  3. An order expanding disclosure requirements under Federal Rule of Civil Procedure 7.1 for non-governmental joint ventures, LLCs, partnerships, and LLPs;
  4. A requirement for the defendant in ANDA cases where there was a Paragraph IV certification to produce the ANDA when responding to the complaint;

The above are numbered only for reference below.

Each of these orders explicitly applies only in Chief Judge Connolly cases.

Order 1: Litigation …

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Skinny Labels Are Back, Baby

Nathan R. Hoeschen, Jan. 6, 2022
ANDA Labels

On Tuesday, Judge Andrews issued what I believe is the first opinion in the district regarding "skinny labels" since the Federal Circuit issued its decision in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., 7 F.4th 1320 (Fed. Cir. 2021).

As anyone immersed enough in patent law to read this blog will know, skinny labeling is the practice of excluding certain indications from the generic drug's label and associated inserts, so as to avoid inducing infringement of method of treatment patents listed in the orange book. In Amarin Pharma, Inc. et al v. Hikma Pharmaceuticals USA Inc., C.A. No. 20-1630-RGA, D.I. 97 (D. Del. Jan. 4, 2022), for instance, the branded drug was indicated for treatment of severe …

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Some ANDA Stats for a Slow Week

Nathan R. Hoeschen, Oct. 21, 2021
ANDA Invalidity

isaac-smith-6EnTPvPPL6I-unsplash.jpg
Charting Goals and Progress, Isaac Smith, Unsplash

To give the reader a bit of a peak behind the curtain, it can sometimes be taxing to write 5 blog posts in a week. This is especially true on a week, like this one, where the Court issues fewer decisions than average. All of us at IP/DE have our own strategies for dealing with this -- my preferred method is to dig up some stats that I had always wondered about, but never bothered to figure out.

This week, my focus was on invalidity challenges in ANDA cases. In particular, what are the relative odds of invalidating a composition patent, vs. a method of treatment patent, vs. a formulation patent?

The …

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The ANDA Controls In Infringement Dispute Over ANDA Product's pH

Jeff Castellano, Aug. 31, 2021
ANDA

In a post-trial Hatch-Waxman opinion issued this week, Chief Judge Connolly sided with the defendant regarding the sole infringement dispute: whether the defendant's ANDA product had an infringing pH. The plaintiffs' patents required that the claimed compositions have a pH of between 3.7 and 3.9. The defendant's ANDA undisputedly required that the defendant's generic product have a pH between 3.4 and 3.6. Importantly, the ANDA required that the product stay within the 3.4-3.6 range both upon release and during the stability testing period (24 months).

Given that the ANDA's requirements are binding on the manufacturer of the generic product, and given that the ANDA is the operative document for the purposes of the infringement inquiry in Hatch-Waxman cases, you might think that would be the end of the inquiry. Indeed, Judge Connolly noted that in these circumstances, a judgment of noninfringement "must necessarily ensue."

However, the plaintiffs challenged this conclusion...

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