On November 17, 2023, Genentech, Hoffman-La Roche, and Biogen (collectively “plaintiffs”) filed a complaint in the federal district court for the District of New Jersey against Dr. Reddy’s Laboratories and Fresenius Kabi (collectively “defendants”) (DNJ No. 23-cv-22485). The plaintiffs allege that the defendants infringe or intend to infringe fifteen patents related to the biologic rituximab, which the plaintiffs sell as Rituxan.

Rituximab is an anti-CD20 monoclonal antibody used for the treatment of various cancers and autoimmune diseases, including leukemia, lymphoma, and rheumatoid arthritis.[1] Rituxan (rituximab) was first FDA-approved in 1997.[2] There are currently three FDA-approved rituximab biosimilars on the market: Celltrion’s Truxima (approved in 2018), Pfizer’s Ruxience (approved in 2019), and Amgen’s Riabni (approved in 2020).[3] Dr. Reddy’s rituximab biosimilar is already approved and marketed as Reditux and Tidecron in India and several Latin American countries.[4]

This is not the first BPCIA case the plaintiffs have filed over rituximab; complaints were filed against Sandoz in December 2017 and Celltrion in January 2018. Both complaints were also filed in D.N.J., and both cases were settled by the end of 2018. However, this is the first complaint filed since other rituximab biosimilars entered the market.

[1] https://www.ncbi.nlm.nih.gov/books/NBK564374/

[2] https://www.accessdata.fda.gov/scripts/cder/daf/index.cfm?event=overview.process&ApplNo=103705

[3] https://www.goodrx.com/rituximab/biosimilars

[4] https://www.gabionline.net/biosimilars/general/Biosimilars-of-rituximab

As one BPCIA case came to a close in May[1], another got underway. On May 1, 2023, Amgen filed a complaint in the District of New Jersey, accusing Sandoz of infringing patents that relate to denosumab, the active ingredient in Amgen’s PROLIA and XGEVA. PROLIA is prescribed for a high risk of bone fracture in certain settings, for example, patients suffering from osteoporosis. XGEVA is prescribed to prevent skeletal-related events (e.g., fractures or spinal cord compression) in cancer patients whose cancer has spread to the bone, as well as to treat certain types of tumors.

Back in February, the FDA accepted Sandoz’s FDA application for a proposed denosumab biosimilar. Now, Amgen is seeking a declaratory judgment of infringement and an injunction prohibiting the production and sale of the proposed biosimilar.

Amgen v. Sandoz, 2:23-CV-02406 (D. N.J.), is one of three BPCIA cases we will continue to monitor and discuss. The other two cases are Regeneron v. Mylan, 1:22-CV-00061 (N.D. W. Va.) (Reference Product: EYLEA)[2] and Biogen v. Sandoz, 1:22-CV-1190 (D. Del.) (Reference Product: TYSABRI). Stay tuned to the Biosimilar Bulletin for updates on these cases and more.

[1] On May 22, 2023, in Janssen Biotech v. Amgen, 1:22-CV-1549 (D. Del.), a joint stipulation of dismissal was filed due to settlement. https://www.biosimilarsip.com/2023/05/24/janssen-and-amgen-settle-stelara-bpcia-case/

[2] The two-week trial scheduled in this case is currently proceeding in the Northern District of West Virginia. Updates to come.

On Tuesday, May 23, 2023, Janssen and Amgen settled their case regarding Amgen’s proposed biosimilar to Stelara in Delaware district court.[1]

Stelara, also known as ustekinumab, is an anti-IL-12/IL-23 antibody drug used to treat plaque psoriasis, psoriatic arthritis, Crohn’s disease, and ulcerative colitis. Amgen has created a biosimilar of Stelara called ABP 654, which has the same amino acid sequence as ustekinumab. Amgen reportedly is conducting clinical studies to support interchangeability of ABP 654 with Stelara.[2] Janssen filed their complaint in November of 2022.

Prior to settlement, the parties were in the midst of completing briefing for a preliminary injunction hearing, initiated by Janssen in an attempt to prevent Amgen from launching their biosimilar product. According to the amended complaint, Amgen provided its Section 8A 180-day notice of commercial marketing on November 7, 2022, and disclosed its aBLA to Janssen in early December 2022.[3] However, the case settled before Amgen filed its answering brief in opposition to the preliminary injunction. The terms of the settlement were not disclosed.

[1] Ord. of Dismissal with Prejudice, 1, Janssen Biotech, Inc., v. Amgen Inc., No. 22-1549-MN (D. Del. May 23, 2023).

[2] See First Amended Complaint ¶ 30, Janssen Biotech, Inc., v. Amgen Inc., No. 22-1549-MN (D. Del. May 23, 2023).

[3] First Amended Complaint ¶¶ 40, 47, Janssen Biotech, Inc., v. Amgen Inc., No. 22-1549-MN (D. Del. May 23, 2023).

Artificial Intelligence (AI) has long been associated with science fiction movies about dystopian futures, leading to fear among the general public about its potential impact. This is especially the case today for those in academia who have graded countless papers written by ChatGPT. However, the truth is far from what we see in the movies. In fact, one industry where AI is making significant progress is the biosimilar industry. AI offers many possibilities, including optimizing process design and process control, smart monitoring and maintenance, and trend monitoring to drive continuous improvement. Recently, the FDA has participated in discussions around AI and biotechnology.

The FDA has already played an important role in the integration of AI in the biotechnology field. It has authorized more than 500 AI/ML-enabled medical devices, but last month, the FDA made two big contributions to the conversation. The first is its publication of a discussion paper on artificial intelligence in drug manufacturing to help proactively prepare for the implementation of AI in the field.[1] The second is an article the FDA published disclosing the implementation of AI-based modeling to analyze protein aggregation in therapeutic protein drugs.[2]

1. FDA Discussion Paper – Artificial Intelligence in Drug Manufacturing

In its discussion paper, the FDA requests public feedback to help inform its evaluation of the existing regulatory framework involving AI in drug manufacturing. The FDA suggests a number of areas for consideration.

One such area is standards for developing and validating AI models. The FDA admits that there are limited industry standards and FDA guidance available for the development and validation of models that impact product quality. The lack of guidance is a concern since AI has such great applicability during drug manufacturing. AI can be used in applications to control manufacturing processes by adapting process parameters based on real-time data, or in conjunction with interrogation of in-process material or the final product to: (1) support analytical procedures for in-process or final product testing, (2) support real-time release testing, or (3) predict in-process product quality attributes.

The FDA also notes the challenge applicants have in defining standards that validate an AI-based model and sustaining the ability to explain the model’s output and impact on product quality. As AI methods become more complex, it becomes more challenging to explain how changes in model inputs impact model outputs.

Another area for consideration is how continuously learning AI systems that adapt to real-time data may challenge regulatory assessment and oversight. AI models can evolve over time as new information becomes available. The FDA states that it may be challenging to determine when such an AI model can be considered an established condition of a process. It also may be challenging to determine the criteria for regulatory notification of changes to these models as a part of model maintenance over the product lifecycle. Applicants may need clarity on: (a) the expectations for verification of model lifecycle strategy, and (b) expectations for establishing product comparability after changes to manufacturing conditions introduced by the AI model.

Comments on these and other issues can be sent to the FDA at the link below.[3]

2. FDA’s AI/Machine Learning Modeling to Ensure Safety and Demonstrate Biosimilarity

Despite the limited guidance the FDA has for AI-based technologies, it recently published a study utilizing AI for characterizing protein aggregation, which will provide a more effective means of demonstrating biosimilarity and improve safety in therapeutic protein drugs.

One major challenge that biosimilar developers face with therapeutic protein drugs is characterizing these products in order to compare them with a reference product. Characterization is particularly an issue because of protein aggregates that can create subvisible particles with a wide variety of sizes, shapes, and compositions from a variety of stress conditions. Although a small fraction of the total protein, these aggregates may increase the risk of undesirable immune responses.

The FDA’s study characterized aggregate protein particles using flow imaging microscopy (FIM). This imaging technique can record multiple images of a single subvisible particle from a single sample. Although these image sets are rich in structural information, manual extraction of this information is cumbersome and often subject to human error, meaning that most of the information is underutilized.

To overcome the shortcomings of current optical image analysis, the FDA applied convolutional neural networks (CNNs), a class of artificial neural networks proven helpful in many areas of image recognition and classification. This AI/ML approach enables automatic extraction of data-driven features (i.e., measurable characteristics or properties) encoded in images. These complex features (e.g., fingerprints specific to stressed proteins) can potentially be used to monitor the morphological features of particles in biotherapeutics, and enable tracking the consistency of particles in a drug product.

CNNs can be trained with input data using supervised learning or a fingerprinting approach. For supervised learning, the AI model is trained using estimations of the most discriminatory parameters defined using images that are correctly labelled as either stressed or unstressed. Once trained, the CNN can predict which pre-defined labels best apply to a new image. The fingerprinting approach, on the other hand, is optimized to reduce the dimension of the spatially correlated image pixel intensities, resulting in a new lower dimensional (e.g., 2D) representation of each image. These lower dimensional representations can be used to analyze complex morphology encoded in a heterogeneous collection of FIM images since the full images can readily be mapped to a lower dimensional representation by the CNN.

The FDA found that flow microscopy combined with CNN image analysis could be applied to a range of products and will provide potential new strategies for monitoring product quality attributes. Such technology will enable processing of large collections of images with high efficiency and accuracy by distinguishing complex “textural features” which are not readily delineated with existing image processing software.

*            *            *

As AI becomes more advanced and more of those in the biosimilar industry utilize this technology, the more guidance the FDA will have to provide, and the sooner the better. These two contributions from the FDA indicate that it is well aware of this need and is even looking to promote AI’s use across the pharmaceutical and biopharmaceutical fields.

[1] https://www.fda.gov/media/165743/download

[2] https://www.fda.gov/drugs/regulatory-science-action/artificial-intelligencemachine-learning-assisted-image-analysis-characterizing-biotherapeutics?utm_medium=email&utm_source=govdelivery

[3] https://www.regulations.gov/  Docket No. FDA-2023-N-0487

After the Supreme Court invited the Solicitor General to file a brief expressing the views of the United States regarding Teva Pharms USA, Inc. v. GlaxoSmithKline LLC, et al., the Solicitor General filed its brief amicus curiae on March 29, 2023. The Solicitor General urged the Supreme Court to grant Teva’s petition for a writ of certiorari. The Solicitor General indicated that even after an outcry of amici in response to the Federal Circuit’s initial decision, the Federal Circuit’s holding that a reasonable jury could view petitioner’s carved-out labeling as evidence of intent to induce infringement of respondents’ method-of-use patent further exacerbated the practical concerns raised by the court’s initial opinion. Specifically, the Solicitor General warned that under the Federal Circuit’s holding, a generic manufacturer that follows the Hatch-Waxman Amendments by marketing an FDA-approved label that carves out the brand-name indications claimed by a method-of-use patent can still be liable for intent to induce infringement.

Additionally, the Solicitor General echoed Judge Prost’s dissent,[1] noting that “[t]he section viii pathway cannot function properly if FDA and generic manufacturers cannot rely on an NDA holder’s representations to the agency regarding which portions of the brand-name drug’s labeling teach patented methods of use.” Under the governing statutes, the FDA cannot authorize a generic drug that would infringe a patent, but it also lacks both the expertise and the authority to review patent claims. As such, it is the brand-name manufacturer’s responsibility to identify the portions of the approved labeling that correspond to the method of use claimed by the patent. Additionally, a generic manufacturer is not free to omit additional portions of the brand-name labeling beyond the omissions approved by the FDA. This uncertainty will deter generic manufacturers from invoking the section viii pathway, which may threaten the availability of lower-cost drugs. Further, the Solicitor General found that the Federal Circuit’s holding that “when a label instructs or teaches a patented use, it can be considered evidence of intent to encourage that use” as inappropriate here, as Teva’s labeling was driven by FDA regulatory requirements and GSK’s own identification of the indication that should be excised.

Finally, in response to the Federal Circuit’s description of Teva’s marketing efforts, catalogs, and press releases that contributed to the finding of intent to induce infringement, the Solicitor General noted that this literature presented to doctors advised the doctors to read the labels and prescribe the drug as indicated by the labels. The Solicitor General stated, “Absent independent evidence that petitioner understood its carved-out labeling to encompass patented uses, proof that petitioner expected and encouraged doctors to rely on the labeling cannot support an inference of intent to induce infringement.”

In light of the Supreme Court’s request that the Solicitor General file its brief amicus curiae, and the Solicitor General’s recommendation that the Supreme Court grant Teva’s petition for a writ of certiorari, it appears that the Supreme Court may agree to hear this case.  We will provide additional updates on this case if this happens.

[1] GlaxoSmithKline LLC v. Teva Pharms. USA, Inc., 7 F.4th 1320, 1342-1361 (Fed. Cir. 2021) (Prost, J., dissenting).

Biosimilars are becoming increasingly important in healthcare as they offer a lower-cost alternative to biologic drugs, which can be expensive for patients, governments, and insurers.  These biologic medicines, which are highly similar to existing biological products and are designed to be as effective and safe as the brand name drugs, offer the potential to provide more affordable treatment options to patients. However, the regulatory landscape for biosimilars is still evolving, and there are legislative efforts to address several perceived impediments to biosimilar approvals and marketing.  To address some of the perceived impediments, various bills have been introduced since Congress passed the Biologics Price Competition and Innovation Act (BPCIA) in 2010. In this article, we will explore the latest updates in biosimilar legislation and their potential impact on patients, healthcare providers, and the pharmaceutical industry.

One impediment is that various states and insurers will not allow pharmacists to substitute a biosimilar unless the FDA declares it to be “interchangeable.” Acquiring interchangeable status requires the product to undergo switching studies whereby participants must alternate between the biologic and the biosimilar. These studies can cost millions of dollars and further delay market access.  In November 2022, Sen. Mike Lee (R-Utah) introduced the Biosimilar Red Tape Elimination Act. The Bill aims to reduce health care costs and increase access to biosimilar drug products by eliminating switching studies as a requirement to obtain an “interchangeability” designation from the FDA. The interchangeability designation allows pharmacists to substitute the reference product for the biosimilar without requiring physician permission. Under Sen. Lee’s proposed Bill, corporations could more easily establish interchangeability, and therefore, patients could more easily obtain their biologic medications at a lower cost.  

In January 2023, the biosimilar landscape saw the emergence of three new Bills that could have significant implications for the future of biologic medicines. Sen. Amy Klobuchar (D-MN) introduced the Stop STALLING Act and the Preserve Access to Affordable Generics and Biosimilars Act. Sen. John Cornyn [R-TX] introduced the Affordable Prescriptions for Patients Act of 2023.

Another impediment is that some drug manufacturers have submitted numerous or baseless citizens petitions so that the FDA would delay competing manufacturers’ biosimilar or generic approvals.  The Stop STALLING Act seeks to deter branded pharmaceutical companies from filing what it claims is a “sham” citizen petition with the FDA in order to interfere with the regulatory approval process for competitors’ generics and biosimilars. Such delays prevent patient access to affordable medication. The Bill would give the FTC enhanced authority to take action against companies that file these sham petitions to delay market entry. The FTC could “commence a civil action to recover a civil penalty and seek other appropriate relief in a district court of the United States against any person that submitted or caused to be submitted” a petition (e.g., a “citizens petition”) if the FTC has reason to believe it is a “sham” petition.

Pay-for-delay deals, the practice in which drug companies use pay-off agreements to delay the introduction of cheaper substitutes, is another impediment.  The Preserve Access to Affordable Generics and Biosimilars Act would prohibit anticompetitive “pay-for-delay deals” that prevent or delay the introduction of affordable generics. The bill targets “reverse payment” settlement agreements which are categorized as “allow[ing] a branded company to share its monopoly profits with the generic company as a way to protect the branded company’s monopoly” and “unduly delay the marketing of low-cost generic drugs contrary to free competition, the interests of consumers, and the principles underlying antitrust law.” These deals increase the cost of prescriptions and impose significant costs on our health care system.

Finally, Sen. Cornyn’s Affordable Prescriptions for Patients Act would curb drug companies’ abuse of patents through “product hopping,” where companies extend exclusivity by switching patients to a new, slightly changed, version of the branded drug while the older version succumbs to generics. Some examples of this behavior include destroying the inventory of the old drug, pulling it from the market, aggressively raising its price, badmouthing the old drug, or even diminishing its safety. As a result of this conduct, patients are stuck paying more for a drug that is substantially similar to the old one. 

Relatedly, on February 22, 2023, Sen. Elizabeth Warren along with Sen. Bernie Sanders and Representatives Katie Porter and Pramila Jayapal sent a letter to Kathi Vidal, director of the United States Patent and Trademark Office (USPTO), arguing that Merck’s development of a subcutaneous version of the biologic drug Keytruda® (pembrolizumab) appears to be an example of anti-competitive business practices, including double-patenting, patent thicketing, product hopping, and evergreening.

Thus, while biosimilars are increasingly important in reducing healthcare costs and increasing patient access to lifesaving medicines, there are various perceived impediments to biosimilar approvals and marketing that will need to be addressed. It is clear that the regulatory landscape for biosimilars is evolving, and we can expect to see more legislation in the coming years as the biosimilar industry continues to grow.

The United States Patent and Trademark Office (USPTO) issued updated guidance on the duty of candor and duty to disclose in relation to submissions made to other government agencies, particularly the Food and Drug Administration (FDA). The Notice did not constitute new rule making and instead aims to clarify the obligations of patent applicants and attorneys to disclose all relevant information to the USPTO. However, in light of the Notice, patent applicants and patent owners should expect to see an increase in the number of patent examiner requests for further documents and information, and invalidity or unenforceability challenges from third parties based on a failure to disclosure or for alleged inconsistent statements made to other governmental regulatory agencies such as the FDA.

Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability. Specifically, 37 CFR 1.56(a) and 1.555(A) state that the duty to disclose applies to “[e]ach individual associated with the filing and prosecuting of a patent application” and “[e]ach individual associated with the patent owner in a reexamination proceeding.” Fed. Reg. Vol. 87, No. 145 at 45765. Specifically, this announcement was designed to remind current or would be applicants that this duty to disclose extends to statements made to other governmental agencies, such as the FDA, in order to obtain licensing or regulatory approval. “If a party to a USPTO proceeding discovers that an earlier position taken in a submission to the USPTO or another Government agency was incorrect or inconsistent with other statements made by the party, the party must promptly correct the record.” Id. The USPTO particularly noted that “when examining a claim directed to a process of manufacturing a particular drug product that was effectively filed more than one year after FDA approval of the drug product, an examiner may appropriately require an applicant to submit to the USPTO information submitted to the FDA (e.g. in a New Drug Application or Biologics License Application) on how the drug product was manufactured.” Id. at 45766.

This announcement was made in direct response to President Biden’s July 2, 2021 Executive Order on Promoting Competition in the American Economy, which, among addressing other issues, expressed concern that “too often, patent and other laws have been misused to inhibit or delay—for years and even decades—competition from generic drugs and biosimilars, denying Americans access to lower-cost drugs.” Id. at 45764 (quoting 86 FR 36987). Following Biden’s executive order, Senators Patrick Leahy and Thom Tillis drafted a letter to Andrew Hirshfeld, then Under Secretary of Commerce for Intellectual property and Director of the USPTO, to “take steps to reduce patent applicants’ making inappropriate conflicting statements in submissions to the [USPTO] and other federal agencies,” specifically noting inconsistent, and at times conflicting, statements made to the FDA and the USPTO Id. at 45764-65.

Although, this notice “clarifies the ’duty of disclosure’ and ‘duty of reasonable’ inquiry owed to the USPTO and American public,” it should be noted that this has always been the rule. Id. at 45765. The updated guidance from the USPTO includes several examples to help clarify the duties of candor and disclosure. Belcher Pharmaceuticals, LLC v. Hospira, Inc., 11 F.4th 1345 (Fed. Cir. 2021) (failure to disclose to USPTO inconsistent statements to FDA invalidated patent claims); Bruno Independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348 (Fed. Cir. 2005) (finding failure to disclose inconsistent was an “exceptional case” and awarding attorney fees).

What must be disclosed to the USPTO?

  1. Any information that is material to patentability (including but not limited to: prior art, prior sales, prior offers for sale, positive or negative testing data, FDA submissions, third party documents).
  2. Third party documents may include, for example, paragraph IV notices, patent dance documents, third party submissions to the applicant or PTO in other application/proceeding, or patent office in another country.
  3. Must correct any incorrect or inconsistent positions taken in a submission to the USPTO or to another Government agency.

 “A duty of reasonable inquiry may exist based on circumstances known to the party presenting the paper to the USPTO.” See Fed. Reg. Vol. 87, No. 145 at 45766. This duty includes reviewing documents that are submitted to or received from other Government agencies, including the FDA. Bruno independent Living Aids, Inc. v. Acorn Mobility Services, Ltd., 394 F.3d 1348 (Fed. Cir. 2005) (prior art “equivalent” submitted in FDA docs was not disclosed to PTO: unenforceable and “exceptional” case with attorney’s fees). Failing to inquire “when the circumstances warrant it” could result in sanctions or other adverse action. This duty also includes inquiring about and disclosing prior offers for sale or sales. GS Cleantech Corp. v. Adkins Energy LLC, 951 F.3d 1310 (Fed. Cir. 2020) (offer for sale more than one year prior to filing, patent prosecutor withheld it from PTO, unenforecable). Other situations may include patent prosecutors consulting with litigation teams and foreign patent counsel to ensure that third party documents from such proceedings are disclosed to the USPTO.

The Notice is a valuable reminder that applicants should immediately implement reasonable procedures to maintain open lines of communication between U.S. patent prosecution counsel and personnel involved in communications with FDA (or other relevant government agency), as well as litigation and foreign patent counsel in relevant situations. Such open lines of communication will reduce risks of a failure to disclose material information. Further, such communications can reduce the risk of inconsistent statements being made to government agencies, and, in the event a seemingly inconsistent statement is made, allow the patent applicant to attempt to promptly correct the record.

Patent counsel can provide an invaluable service to companies concurrently seeking patent protection and FDA approval. Given that patent counsel is already deeply familiar with the patentability issues and trained in spotting material information, consulting with patent counsel can efficiently prevent a failure to comply with the duty of disclosure and avoid submission of inconsistent statements that violate the duty of candor. Moreover, given that drug development often involves complex partnering relationships between two or more companies, patent counsel can play an integral role in preserving privilege in such situations.

Disclaimer: The information contained in this posting does not, and is not intended to, constitute legal advice or express any opinion to be relied up legally, for investment purposes or otherwise. If you would like to obtain legal advice relating to the subject matter addressed in this posting, please consult with us or your attorney. The information in this post is also based upon publicly available information, presents opinions, and does not represent in any way whatsoever the opinions or official positions of the entities or individuals referenced herein.

The Supreme Court agreed on Friday, November 4, 2022, to review the standard for enablement of genus claims after the Federal Circuit’s decision in Amgen, Inc. v. Sanofi. We have previously covered Amgen’s petition for a writ of certiorari and the multiple amicus curiae briefs submitted in the case. As detailed below, the Supreme Court’s decision to hear this case is contrary to the recommendations in a brief for the Solicitor General filed this September, and is a victory for Amgen in support of its patent claims covering antibodies that bind and block PSK9 (a receptor involved in LDL cholesterol metabolism).

The question to be reviewed by the Supreme Court is:

Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “ ‘time and effort.’ ”

Interestingly, the Court did not grant cert as to Question 1 of Amgen’s Petition, which sought review of whether enablement is a question of fact for the jury, rather than a question of law as the Federal Circuit has held.  The Court on Monday, November 7, 2022, denied cert to a petition filed by Juno Therapeutics (a subsidiary of Bristol Myers Squibb) and Sloan Kettering seeking review of the written description standard applied by the Federal Circuit in invalidating the petitioners’ patent on CAR-T immunotherapy. That Federal Circuit decision erased a $1.2B jury verdict finding Kite Pharma (now Gilead) guilty of patent infringement.

Recent Federal Circuit decisions, including Amgen v. Sanofi and Juno v. Kite, have made it increasingly difficult for patent owners to defend claims directed to discovery of a novel therapeutic target or epitope, requiring innovators to more narrowly claim specific sequences of therapeutic molecules. The Supreme Court’s decision to grant certiorari in the Amgen case raises the possibility that patent owners will see the pendulum shift back in favor of genus claims.

In the Brief for the United States as Amicus Curiae, the government recommended that the petition for writ of certiorari be denied. First, the government contended that the district court and court of appeals’ treatment of enablement as a question of law was not incorrect, as the enablement inquiry has both fact and legal components. The government stated, “[P]etitioners concede that a court may resolve a question initially decided by the jury on a motion for JMOL, and that is what the courts below did here.” Second, in addressing the degree of experimentation required to implement the full scope of the claims, the government stated that because the Patent Act requires a patent to enable the invention, where a patentee purports to invent an entire genus, it must enable the entire genus. The government stated that the Federal Circuit considered the degree of experimentation as only one of the Wands factors and emphasized that it was not “hold[ing] that the effort required to exhaust a genus is dispositive.” Because the Petitioners did not dispute that the Wands factors provided an appropriate framework for resolving questions of enablement and undue experimentation, nor did they propose an alternative standard for determining whether a patent adequately enables the claimed invention, the government recommended the petition be denied.

Petitioners responded to the government’s brief by stating that the government had rewritten the legal questions and then argued that its own questions did not warrant review. Petitioners noted that the government stated that enablement is a question of both law and fact, and that the Federal Circuit’s overturning of the jury’s verdict is not an ordinary application of JMOL. Additionally, the Petitioners pointed to the Federal Circuit’s admission that the enablement standard for genus claim may be raised if “substantial time and effort would be required to reach the full scope of claimed embodiments.” Petitioners alleged that the government never explained “why a claim should be invalidated based on the cumulative effort to make all claimed embodiments where, as here, it would not require undue experimentation for skilled artisans to make and use any individual embodiment.”

After the briefs were distributed for conference on November 4, the Supreme Court granted the petition as limited to Question 2—the enablement question.

On September 27, 2022, Judge Richard Andrews of the District of Delaware granted Novartis’s motion to dismiss declaratory judgment (“DJ”) counterclaims raised by two generic drug manufacturers in the ongoing litigation regarding Novartis’s heart failure medication, Entresto® (sacubitril/valsartan).[1] The decision provides guidance to ANDA applicants seeking to maintain a case or controversy for DJ counterclaims under the Hatch Waxman Act.

In September 2019, several generic drugmakers, including Hetero USA Inc. and Torrent Pharma Inc., filed ANDA applications for generic versions of Entresto®. Subsequently, in September 2021, Novartis sued the ANDA applicants alleging infringement of U.S. Patent No. 11,096,918 (“the ’918 patent”). Hetero and Torrent filed answers which included counterclaims seeking declaratory judgment of invalidity and non-infringement for not only the ’918 patent, but also four additional patents that Novartis listed in the Orange Book more than a year after Hetero and Torrent filed their respective ANDA applications.[2] After the patents were listed, Hetero and Torrent supplemented their ANDA applications to include Section viii statements carving out the protected indications from their labeling. However, Defendants never pursued Paragraph IV certifications for these four patents.

Novartis moved to dismiss the counterclaims, arguing that Hereto and Torrent were barred by statute because they did not serve any Paragraph IV notice on Novartis as required by 21 U.S.C. § 355(j)(5)(C)(i) and 35 U.S.C. § 271(e)(5). Although Judge Andrews disagreed with Novartis on this point, he nonetheless dismissed the counterclaims, holding that an ANDA applicant that submits a Section viii statement does not create an “actual controversy” because there is no cause of action. The Hatch Waxman Act allows generic manufacturers to limit the scope of regulatory approval they seek—and thereby forego Paragraph IV certification and a § 271(e)(2) infringement suit—by excluding patented indications from their ANDAs using Section viii statements. “Thus, an ANDA applicant that submits a Section viii statement for a patent does not face the imminent threat and actual controversy of an infringement action . . . for that patent.”[3]

Based on this case, courts may find that preemptively carving out of an ANDA label the subject matter of a patent which has not been asserted does not provide standing for the ANDA applicant to seek declaratory judgment of noninfringement for that unasserted patent. ANDA applicants can avoid this situation by filing a Paragraph IV certification of non-infringement along with the label carve out under Section viii.

Although there is no equivalent of Section viii in the BPCIA, biosimilar applicants can choose to carve out certain indications or conditions of use from the label of the reference product sponsor (RPS) for patent reasons.[4] A biosimilar applicant wishing to engage in pre-launch litigation of an RPS patent claiming a method of use directed to the carved-out indication can engage in the Patent Dance by providing its aBLA and accompanying information to the RPS.[5] If the RPS does not include the relevant patent on its “3A list” of patents that could reasonably be asserted, the biosimilar applicant can include the patent in its responsive “3B list.”[6] This procedure allows the biosimilar applicant to propose the patent for inclusion in the “first wave” litigation, and if it is not included, the biosimilar applicant may file a declaratory judgment action after service of its notice of commercial marketing.[7]


[1] In re: Entresto (Sacubitril/Valsartan) Patent Litig., Case No. 1-20-md-02930, D.I. 844 (D. Del. Sep. 27, 2022).

[2] The four additional patents are U.S. Patents No. 9,517,226 (the “’226 patent”), 9,937,143 (the “’143 patent”), 11,135,192 (the “’192 patent”), and 11,058,667 (the “’667 patent”).

[3] D.I. 844 at 12.

[4] See Food and Drug Administration, Guidance for Industry: Biosimilars and Interchangeable Biosimilars: Licensure for Fewer Than All Conditions of Use for Which the Reference Product Has Been Licensed (February 2020).

[5] 42 U.S.C § 262(l)(2)(A).

[6] 42 U.S.C. § 262(l)(3).

[7] See 42 U.S.C. § 262(l)(9)(A).

On September 9, 2022, Biogen Inc. and Biogen MA Inc. (“Plaintiffs”) filed suit against Sandoz Inc., Sandoz International GMBH, Sandoz GMBH, and Polpharma Biologics S.A. (collectively, “Defendants”) in the District of Delaware concerning twenty-eight different patents. Although the complaint was filed under seal, the complaint appears to be related to Defendants’ natalizumab biosimilar (proprietary name of Tysabri®).  Sandoz announced on July 25, 2022 that the FDA had accepted its aBLA for natalizumab.  Biogen’s twenty-eight asserted patents have not yet been listed in the Purple Book.  This suggests that either (1) Sandoz already provided its 180-day notice of commercial marketing under 42 USC § 262(l)(8)(A), or (2) Sandoz may have opted out of the patent dance by refusing to produce its aBLA and associated documents (see § 262(l)(9)). On September 12, Judge Connolly granted Plaintiffs motion to file the complaint under seal. The order requires Biogen to file a redacted version of the complaint by September 19, which will then provide more details on the BPCIA litigation.  We will provide further updates as the case progresses.

Updated on September 20, 2022

The redacted, publicly available version of the complaint is now available. Based on the information in the complaint, Biogen claims that Defendants have provided some, but not all, of the information contemplated by 42 USC § 262(l) regarding the Defendants’ natalizumab aBLA product. Biogen asserts that Defendants have not provided all information requested under 42 USC § 262(l)(2)(A)-(B), and have not provided a complete response to Biogen’s list of asserted patents under 42 USC § 262(l)(3)(B)(ii). Because of these alleged failures to comply with the statute, Biogen has sought a declaratory judgment of patent infringement as permitted under 42 USC § 262(l)(9)(B).