Chinta & Fratangelo LLP

On Monday, May 10, 2010, the Federal Circuit issued two decisions dealing with 35 U.S.C. § 156 (patent term extension to compensate for regulatory delays).

In Ortho-McNeil Pharmaceutical, Inc. v. Lupin Pharmaceuticals, Inc., No. 2009-1362 (Fed. Cir. 5/10/2010) (Judges Newman, Rader, Linn; opinion by Newman).  Daiichi Pharmaceuticals owns U.S. 5,053,404, and obtained a patent term extension of 810 days under § 156 for the drug levofloxacin.  The ‘404 patent was in turn licensed to Ortho-McNeil.  Lupin filed an ANDA for levofloxacin under paragraph IV.  Lupin agreed that the patent was valid and enforceable, but argued that the patent term extension was improper, on the basis that levofloxacin was not a new drug (“the first commercial marketing”), but rather an enantiomer of ofloxacin, a previously approved drug, and thus was not entitled to the patent term extension.  Lupin also argued that 21 U.S.C. §355(u)(1) (Supp. II 2008) authorizes an NDA applicant to “elect to have the single enantiomer not be considered the same active ingredient as that contained in the approved racemic drug,” and that this “election” was an understanding that enantiomers are the same active ingredient as racemate.

Newman rejected Lupin’s reasoning.  Ortho responded that the FDA considers enantiomers to be distinct from their racemate, and that the USPTO found levofloxacin patentable over the enantiomer.  Newman concludes that the enantiomer of racemic ofloxacin is a different drug product than ofloxacin, and is subject to regulatory approval before it could be commercially marketed and used, so the patent term extension was properly awarded.

The opinion makes two interesting comments.  First is a mention of a memorandum of understanding between the USPTO and FDA, 52 Fed. Reg. 17,830 (FDA May 12, 1987) (slip op. at 3), observing that “while it is the responsibility of the Commissioner of Patents and Trademarks to decide whether an applicant has satisfied [the conditions of 35 U.S.C. §156 for awarding patent term extensions], the FDA possesses expertise and records regarding some of these conditions.”

The second comment is a reaffirmance of the holding in Pfizer Inc. v. Dr. Reddy’s Labs., Ltd., 359 F.3d 1361, 1366 (Fed. Cir. 2004), that a patent extension under 35 U.S.C. § 156 does not apply to non-approved used of the patented product.

The other case is Photocure USA v. Kappos, No. 2009-1353 (Fed. Cir. 5/10/2010) (also decided by Judges Newman, Rader, Linn; opinion by Newman). The drug is methyl aminolevulinate hydrochloride (MAL hydrochloride).  U.S. Patent No. 6,034,237 was granted covering MAL hydrochloride, and upon approval of MAL hydrochloride as a drug, the patentee filed for a patent term extension under § 156.  The USPTO refused to grant the extension, arguing that MAL hydrochloride was a methyl ester of aminolevulinic acid hydrochloride (ALA hydrochloride), and that MAL had the same “active moiety” as ALA, and was “simply formulated differently.” Thus, the USPTO took the view that MAL was not a new drug and therefore did not qualify for a § 156 extension.

This same argument, that MAL hydrochloride was not a new drug within the meaning of § 156 was also taken by the FDA.  However, Newman notes that MAL hydrochloride was a new drug according to the Food, Drug and Cosmetic Act, and required FDA approval. The clinical and other tests required for approval took over four years.

The panel rejected the USPTO position, and held that since the ester was subject to a full regulatory review period before commercial marketing, that the requirements of § 156 were met. Newman also notes that MAL has different pharmacological properties than ALA, and that MAL is a different chemical compound than ALA, i.e., a simple alkyl ester is a distinct chemical compound from its corresponding acid.

Newman cites for support Glaxo Operations UK Ltd. v. Quigg, 894 F.2d 392, 393 (Fed. Cir. 1990) (“a compound can only qualify as the ‘active ingredient’ of a drug if that compound itself is present in the drug”) and Hoechst-Roussel Pharms., Inc. v. Lehman, 109 F.3d 756, 759 n.3 (Fed. Cir. 1997) (“For purposes of patent term extension, this active ingredient must be present in the drug product when administered.”).  Newman distinguishes Pfizer Inc. v. Dr. Reddy’s Laboratories, Ltd., 359 F.3d 1361 (Fed. Cir. 2004) (infringement of an extended patent on the drug amlodipine was not avoided by changing the salt).  Thus, salts may be the “same chemical compound,” when esters are not.

Newman also rejected USPTO arguments that it was entitled to deference under Skidmore or Chevron.

The panel held that MAL hydrochloride qualified for a § 156 patent term extension.