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Case 1:09-cv-04665-DLC Document 49-2 Filed 03/30/2010 Page 40 of 45Nowhere does this letter explain that, while the ‘584 and ‘404 patents include drug product claims,those claims do not cover the Actos ® drug product.47. On information and belief, on January 22, 2010, Takeda sent a second letter to FDA,this time referencing the Sandoz Citizen Petition. This letter references Takeda’s prior letter ofNovember 2009 and states in relevant part with respect to the ‘584 and ‘404 patents:As detailed in the [November 2009] letter, Takeda submitted thesetwo patents to FDA in 1999 and 2002, respectively, andcharacterized them for FDA in the appropriate patent declarationsas containing both “Drug product” and “Method of use” claims.Since the original submission of these patents to FDA, Takeda hascontinued to certify to the applicability of the patents to Actos ®under the original declarations, in accordance with 21 C.F.R. §314.53(d)(2)(ii). For this reason, Takeda requested in itsNovember letter that FDA direct companies that have submittedabbreviated new drug applications referencing Actos ® to submitappropriate certifications to the patents. Because the patentsinclude drug product claims, a statement under “section viii” of therelevant provision of the [FDCA] for each patent is, by itself,legally insufficient.Nowhere does this letter explain that, while the ‘584 and ‘404 patents include drug product claims,those claims do not cover the Actos ® drug product.The Misleading and Incorrect Information Submitted by Takeda Caused FDATo Change the Orange Book Status of the ‘584 Patent and the ‘404 Patent48. On March 15, 2010, FDA issued its ruling on the Sandoz Citizen Petition. FDAgranted the petition. FDA stated, in relevant part:This letter responds to your citizen petition, received on August 25,2009 (Petition), requesting that [FDA] refrain from granting finalapproval for any [ANDA] for a generic version of Actos ®(pioglitazone hydrochloride (HCl)) tablets … if the ANDAincludes a section viii statement … with regard to U.S. Patent No.5,965,584 (the ‘584 patent) and/or U.S. Patent No. 6,329,404 (the‘404 patent) unless that ANDA also includes a paragraph IVcertification … to the respective patent. We have carefullyconsidered the Petition and comments submitted to the docket. Forthe reasons described below, the Petition is granted.9067383.139
Case 1:09-cv-04665-DLC Document 49-2 Filed 03/30/2010 Page 41 of 45See FDA-2009-P-0411, Letter dated March 15, 2010 (“FDA Letter”), at 1.49. In its decision, FDA relied expressly on Takeda’s submissions to conclude that the‘584 and ‘404 patents contain drug product claims and that, as a result, paragraph IV certificationare required. Among other things, FDA stated:FDA’s role in listing patents and patent information in the OrangeBook is ministerial (see American Bioscience v. Thompson, 269F.3d 1077, 1080 (D.C. Cir. 2001)). FDA relies on the NDAsponsors to provide an accurate patent submission (consistent withpreviously applicable regulations regarding patent submissions forpatents submitted before August 18, 2008 and on FDA Form 3542for patents submitted after August 18, 2003). . . .* * *In keeping with our practice of relying solely on the NDAsponsor’s patent declaration describing relevant patent claims inOrange Book-listed patents, FDA will rely on Takeda’s patentdeclarations submitted to FDA.FDA Letter, at 9. FDA did not independently determine that the ‘584 patent and the ‘404 patentcontain drug product claims that can properly be listed for NDA 21-073. Rather, FDA reliedentirely on Takeda’s assertions that those patents contain drug product claims.50. On the basis of Takeda’s assertion that the ‘584 patent and the ‘404 patent containdrug product claims as well as method-of-use claims, FDA concluded that “FDA will consider anyANDA referencing Actos ® that lacks appropriate certifications to the ‘584 and the ‘404 patentsineligible for final approval.” FDA Letter, at 11. Therefore, as of March 15, 2010, and despiteFDA’s earlier granting of tentative approval to Teva’s Actos ® ANDA, FDA now requires that Tevasubmit a paragraph IV certification to the drug product claims in the ‘584 and ‘404 patents if Tevaseeks approval of its Actos ® ANDA before those patents expire in 2016.9067383.140
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David P. Langlois (DL 2319) SUTHERLAND ... - FDA Law Blog

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