GENERICally Speaking: A Hatch-Waxman Litigation Bulletin 2023 Q4

The fourth quarter issue of the GENERICally Speaking campaign provides you and your company with some of the knowledge beneficial to remaining attentive to the complexity of ANDA patent litigation.

In this issue:

H. Lundbeck A/S v. Lupin Ltd.
Trintellix® (vortioxetine)
Defendants’ proposed carved-out label was the basis for the court’s non-infringement opinion, which was affirmed on appeal.
Actelion Pharms. Ltd. v. Mylan Pharms. Inc.
Veletri® (epoprostenol)
Because the District Court should have addressed the extrinsic evidence to understand how a skilled artisan would understand the claim language, the Federal Circuit vacated the lower court’s construction of “a pH of 13 or higher” and its judgment of infringement.
Corcept Therapeutics, Inc. v. Teva Pharms. USA, Inc.
Korlym® (mifepristone)
Plaintiff did not meet its burden to prove induced infringement because there was no direct infringement and no intent to induce on the part of the Defendant.
Acadia Pharms. Inc. v. Aurobindo Pharma Ltd.
Nuplazid® (pimavanserin tartrate)
The patent-in-suit was not invalid for obviousness-type double patenting based on the court’s interpretation of 35 U.S.C. § 121.
Eisai R&D Mgmt. Co., Ltd. v. Dr Reddy’s Labs., Inc.
Halaven® (eribulin mesylate)
The court granted plaintiff’s motion to dismiss on the grounds that plaintiff offered defendant a covenant not to sue thereby divesting the court of subject matter jurisdiction.
Norwich Pharms., Inc. v. Becerra
Xifaxan® (rifaximin)
Because the district court’s final judgment explicitly prohibited final approval until a date certain, the FDA did not err in granting tentative—and not final—approval to an amended ANDA that included a skinny label.
Bausch Health Ireland Ltd. v. Padagis Israel Pharms. Ltd.
Arazlo® (tazarotene)
The court granted plaintiff’s Rule 12(c) motion concerning Defendant’s inequitable conduct counterclaim because Defendant raised a new argument unsupported by the factual allegations in its Amended Answer and did not plead facts that would make plausible the inference that, but for the withholding certain material prior art, Plaintiff would not have overcome the rejection for obviousness and obtained allowance.