David P. Langlois (DL 2319) SUTHERLAND ... - FDA Law Blog

Case 1:09-cv-04665-DLC Document 49-2 Filed 03/30/2010 Page 36 of 45Takeda’s Original Listing of the Patents in the Orange Book35. On information and belief, FDA approved NDA 21-073 for Actos ® on or about July15, 1999. On that date, neither the ‘584 patent nor the ‘404 patent had been issued. The ‘584patent issued in October 1999, and the ‘404 patent issued in December 2001.36. On information and belief, Takeda submitted the patent declaration to list the ‘584patent for the Actos ® NDA on November 5, 1999. In that declaration, Takeda stated: “Theundersigned declares that Patent No. 5,965,584 covers the formulation, composition, and/ormethod of use of Pioglitazone HCl (AD-4833) Tablets in combination with a biguanide.”(emphasis added).37. On information and belief, Takeda submitted the patent declaration to list the ‘404patent for the Actos ® NDA on January 3, 2002. In that declaration, Takeda stated: “Theundersigned declares that at least one claim of recently issued US Patent Number 6,329,404 canbe reasonably asserted to cover the formulation, composition, and/or method of use ofPioglitazone HCl (AD-4833) Tablets.” (emphasis added).38. When listed in the Orange Book to NDA 21-073, those patents were flagged ashaving a method-of-use code, reflecting the method-of-use claims in the patent. That coding in theOrange Book was consistent with the letter and the spirit of the Orange Book listing requirements,as only the method-of-use claims in those patents provide an arguable basis upon which a claim ofpatent infringement could reasonably be asserted (in certain circumstances) against a companyselling a generic version of Actos ® .39. While the Orange Book did also contain a notation in a footnote indicating as ageneral matter that the inclusion of method-of-use codes for a patent did not necessarily mean thatthe patent was not also listed on bases other than method-of-use claims, there were no claims in the9067383.135