Earlier today, Judge Royce C. Lamberth of the U.S. District Court for the District of Columbia issued a 2-page order in Teva Pharmaceuticals USA, Inc. v. Leavitt siding with Teva. This case concerns the relisting of U.S. Patent #5,158,952 (“the ‘952 patent”) in the Orange Book covering Janssen Phaemaceutica’s RISPERDAL (risperidone) Tablets. As we previously reported (here and here), Teva sued FDA in March 2008 after the Agency denied a citizen petition Teva submitted in August 2007 requesting that the Agency relist the ‘952 patent and confirm Teva’s eligibility for 180-day exclusivity. Judge Lamberth’s order declares that the delisting of the ‘952 patent was unlawful, orders FDA to relist the patent in the Orange Book and restore Teva’s Paragraph IV patent certification, and enjoins FDA from approving any generic RISPERDAL Tablets ANDAs until Teva’s 180-day exclusivity expires.
According to Teva’s citizen petition, Teva submitted ANDA #76-228 to FDA on August 28, 2001. The ANDA contained a Paragraph III certification to U.S. Patent #4,804,663 (which expired in December 2007, but is covered by a period of pediatric exclusivity scheduled to expire in June 2008), and a Paragraph IV certification to the ‘952 patent. In October 2001, FDA notified Teva that the ‘952 had been delisted from the Orange Book, and required the company to amend its patent certification to reflect that the ‘952 patent was no longer listed in the Orange Book as claiming RISPERDAL Tablets. Teva complied and submitted the ANDA amendment. After the U.S. Court of Appeals for the District of Columbia Circuit decided in Ranbaxy Laboratories Ltd. v. Leavitt in November 2006 that FDA may not delist a patent from the Orange Book following the submission of an ANDA with a Paragraph IV certification to that patent, however, Teva reportedly reviewed its ANDA portfolio for any potential unlawful patent delistings that could affect the company’s eligibility for 180-day exclusivity. This review led to the company’s August 2007 citizen petition.
Teva argues in its petition that because the “official Orange Book” (that is, the printed edition of the Orange Book) listed the ‘952 patent when the company submitted ANDA #76-228, “FDA’s putative delisting of the ‘952 patent did not become effective until January 2002, when the official Orange Book reflected the delisting of that patent.” As such, according to Teva, given the decision in Ranbaxy, FDA could not have lawfully delisted the ‘952 patent because of the company’s Paragraph IV certification to that patent, and the company remains eligible for 180-day exclusivity. Teva also contends that because FDA “failed to provide official notice of the ‘delisting’ for several months following the submission of Teva’s ANDA,” the delisting does not affect Teva’s “entitlement” to 180-day exclusivity.
FDA states in its petition response that according to the Agency’s records, the ‘952 patent was delisted before Teva submitted ANDA #76-228 to FDA in August 2001, and that as a result, the delisting was proper and Teva is not eligible for 180-day exclusivity. Specifically, FDA states that the “delisting of the ‘952 patent was reflected in the publicly available, electronic Orange Book shortly after June 29, 2001, and no later than July 20, 2001, the date of the next database update.” As such, “at the time Teva submitted its ANDA, the electronic Orange Book contained the most current information regarding patents listed for Risperdal tablets . . . [and Teva’s] assertion that the delisting of the ‘952 patent did not become effective until publication of the 2002 annual edition of the Orange Book is without merit.”
Teva’s complaint requests that the court enter an injunction compelling FDA to relist the ‘952 patent and restore the company’s paragraph IV patent certification, and declare that Teva is entitled to 180-day exclusivity. Teva also requests that the court enjoin FDA from granting final approval to other ANDAs for generic RISPERDAL during Teva’s 180-day exclusivity period. Both Mylan, which subsequently entered the case, and Pliva have tentatively approved ANDAs, the final approval of which would be delayed if the District Court’s ruling stands. Teva argues that “FDA’s refusal to relist the ‘952 patent and award Teva 180-day exclusivity period violates the plain language of the Hatch-Waxman Act and flounts the D.C. Circuit’s binding decision in [Ranbaxy] . . . . In addition, FDA’s refusal to restore the ‘952 patent to the Orange Book and award Teva 180-day exclusivity conflicts with the Agency’s own regulations and the Orange Book itself. As such, FDA’s actions here contravene the Administrative Procedure Act (‘APA’), because they fail to embody principles of reasoned agency decision-making and are contrary to settled agency practice, arbitrary, capricious, and otherwise contrary to law.”
As Teva states in a recent court submission, “Teva’s complaint raises the purely legal question of whether FDA violated the APA when it denied Teva’s citizen petition . . . . [T]he validity of that decision rises or falls on the Agency’s purely legal rationale: that its ‘electronic Orange Book Query’ feature - but not the Orange Book and then-current Cumulative Supplement - provided the legally operative patent listings at the time Teva submitted its risperidone ANDA. If the Query feature controlled, Teva’s certification was improper and it is not entitled to exclusivity – regardless of what the Cumulative Supplement indicated. And if the current Cumulative Supplement controlled, then Teva’s certification was not only appropriate but legally required, and Teva is entitled to exclusivity – regardless of what the Query feature would have shown . . . .” In support of its position that the printed version instead of the electronic version of the Orange Book was controlling in 2001, Teva notes, among other things, that both the Orange Book and monthly Cumulative Supplements at that time “explicitly confirmed that those publications (but not the electronic Orange Book Query feature) provided the ‘drug patent . . . information required of the Agency by [Hatch-Waxman],’ and instructed applicants that the annual Orange Book ‘must be used in conjunction with the most current Cumulative Supplement . . . [b]ecause all parts of the publication are subject to changes, additions, or deletions’” (citing the August 2001 Orange Book Supplement at iii).
Judge Lamberth apparently agreed with Teva’s rationale that the printed version of the Orange Book controlled in 2001 in granting Teva’s requested relief. It seems likely that FDA and Mylan will appeal the decision to the U.S. Court of Appeals for the District of Columbia Circuit.