API and IP Newsletter

 Contents


ANDA approvals in September 2022


We analyse ANDA approvals every month.

In September there are about 90 approvals and about 5% of those were tentative approvals. 


ANDA 

Company

Sidvim comments

RIOCIGUAT

MSN

First ANDA approval for Riociguat. There must be many more. Generic launch in US seems to be difficult before 2026

LENALIDOMIDE

CIPLA

Approval is for 5 MG, 10MG, 15 MG and 25 MG capsules. This is blockbuster product more than $ 2 Bn product. DRL had settled and allowed to launch till 2026 as per the agreement. Teva launched. So, there are many players now and Cipla's share will not be too significant. 

ROFLUMILAST

MSN

Approval is for 500 MGC and 250 MGC tablets. 


Roflumilast is already generic since January 2020. Several approvals. However, as per quick search it seems there are not many approvals for 250 MCG tablet, and it could work in favour of MSN. DMF was filed by MSN long ago and they must be using in-house API.

VIGABATRIN

MSN

Several other approvals for 500 MG packets. MSN had filed DMF about 9 years ago and must be using their own API.

TIMOLOL MALEATE

MICRO LABS

An old product, several ANDAs 


General observations:

  1. MSN was far ahead than others in August 2022 in seeking FDA approvals. There are overall 6 approvals, including two tentative approvals. 

  2. At second place are Gland and Zydus. There are 3 approvals each. 

General information


Govt not to impose anti-dumping duty on Chinese chemical


India will not impose anti-dumping duty on a Chinese chemical used in pharma industry as the finance ministry has not accepted the recommendations of DGTR for imposing the levy. The commerce ministry's investigation arm DGTR had conducted a probe into the alleged dumping of "(4R-Cis)-1-1-Dimethylethyl-6-cyanomethyl-2, 2-dimethyl-1, 3-dioxane-4-acetate" from China, and in August it recommended the imposition of the duty.


News here.



Honeywell Introduces Manufacturing Excellence Platform, Driving Digital Transformation In The Life Sciences Industry


Honeywell today introduced its Manufacturing Excellence platform, which provides real-time end-to-end production visualization and dashboards for multiple user roles from operators to management, process unit timelines, detailed equipment status, and trends of critical process parameters. The Manufacturing Excellence platform, built for Life Sciences applications, puts actionable information in context in one interface.


The solution digitizes paper-based batch records, work instructions, and logbooks to ensure consistent compliance with standard operating procedures. Visibility of batch progress and alerts on critical process parameters enable users to respond quickly if batches start trending toward excursion beyond golden batch or expected limits, therefore saving batches and improving quality. 

News here.


Intellectual Property 


Delaware Court denied Allergan’s motion to strike down “unclean hand” arguments


Sun Pharma claims that AbbVie Inc.'s Allergan unit misused confidential information to prosecute patents for a formulation of eluxadoline. The drug is used to treat irritable bowel syndrome. 


OB listed patents are as follows


Patent No

Patent Expiration

Drug Substance

Drug Product

Patent Use Code

7741356

05/27/2029

DS

DP


7786158

03/14/2025

DS



8344011

03/14/2025



U-1709

8609709

03/14/2025

DS



8691860

07/07/2028

DS


U-1709

8772325

03/14/2025



U-1709

9115091

07/07/2028

DS

DP

U-1738

9205076

03/14/2025



U-1709

9364489

07/07/2028



U-1709

9675587

03/14/2033


DP


9700542

03/14/2025


DP


9789125

07/07/2028


DP

U-1709 U-2152

10188632

03/14/2033


DP


10213415

03/14/2025

DS


U-2152

11007179

03/14/2033


DP


11090291

03/14/2033


DP


11160792

03/14/2033


DP


11229627

03/14/2033


DP


11311516

03/14/2033


DP



  1. Allergan sued Sun for patent infringement in the District of Delaware in 2019. This is mainly related to two OB listed patents US 11,229,627 and US 11,311,516. These two are later expiration patents (2033) than composition of matter patent which will expire in 2029.

  2. Sun counter sued, claiming Allergan had unclean hands because it used information learned during the litigation with Sun to obtain these new eluxadoline patents. Sun claims that Allergan misused Sun's confidential information to prosecute the '516 Patent and then asserted that patent against Sun. 


  1. Sun alleges that prior to the date suit was filed in 2019, Allergan consistently prosecuted patent applications that recited "colloidal silica" or "colloidal silicon dioxide" as a required limitation in "each and every claim." 


  1. Sun alleges that after Allergan "had accessed Sun's confidential information regarding its ANDA Product formulation," Allergan eliminated the limitation requiring "colloidal silicon dioxide" from claims in the patent application that led to the '179 Patent


  1. Sun alleges that Allergan later used Sun's confidential information to draft claims in the '516 Patent to "not explicitly require colloidal silica in an improper attempt to cover Sun's ANDA Product Formulation, which Allergan did not invent. 


  1. Sun alleges that Dr. Tim Costello, one of the inventors named on the '516 Patent, has stated "that he never invented any eluxadoline composition that did not include colloidal silica."


  1. Allergan asserts that Sun's counterclaim for unclean hands sounds fraud. Allergan argues Sun's unclean hands counterclaim must be pled with particularity as required by the Federal Rule of Civil Procedure 9(b) standard. here


  1. Sun contends that its unclean hands counterclaim is based on unconscionability (Unconscionability is a doctrine in contract law that describes terms that are so extremely unjust, or overwhelmingly one-sided in favor of the party who has the superior bargaining power, that they are contrary to good conscience) and bad faith. Sun argues it only needs to meet Federal Rule of Civil Procedure Rule 8's less-demanding requirements for pleading its counterclaim because it does not sound in fraud. here


  1. The Court found that Sun's affirmative defense of unclean hands is properly pled. The pleading standard for an affirmative defense is less demanding than that of a claim or counterclaim. 


  1. Sun states a plausible claim that the '516 Patent is unenforceable due to the doctrine of unclean hands. This Court agreed.  Court also denied Allergan’s motion to strike other defenses such as Prosecution History Estoppel and Patent misuse raised by Sun. So far, this case is moving favourably for Sun.



Decision here









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