Litigation Details for ADAPT PHARMA OPERATIONS LIMITED v. TEVA PHARMACEUTICALS USA, INC. (D.N.J. 2016)

ADAPT PHARMA OPERATIONS LIMITED v. TEVA PHARMACEUTICALS USA, INC. (D.N.J. 2016)

Docket		Date Filed	2016-10-21
Court	District Court, D. New Jersey	Date Terminated
Cause	35:271 Patent Infringement	Assigned To	Brian R. Martinotti
Jury Demand	None	Referred To	Joseph A. Dickson
Patents	9,211,253; 9,468,747; 9,561,177; 9,629,965; 9,775,838
Link to Docket	External link to docket

Details for ADAPT PHARMA OPERATIONS LIMITED v. TEVA PHARMACEUTICALS USA, INC. (D.N.J. 2016)

Date Filed	Document No.	Description	Snippet	Link To Document
2016-10-21	128		Construction and Prehearing Statement for U.S. Patent No. 9,775,838 by ADAPT PHARMA LIMITED, ADAPT PHARMA OPERATIONS…October 2016 2:16-cv-07721-BRM-JAD 830 Patent None District Court, D. New Jersey	External link to document
2016-10-21	171		Amended Invalidity Contentions for U.S. Patent Nos. 9,211,253; 9,68,747; 9,561,177;9,629,965; and 9,775,838…October 2016 2:16-cv-07721-BRM-JAD 830 Patent None District Court, D. New Jersey	External link to document
2016-10-21	200		of United States Patent Numbers 9,211,253 (“‘253 patent”) and 9,468,747 (“747 patent”), Claim 10 of the… ‘253 patent and ‘747 patent, and Claim 29 of United States Patent No. 9,629,965 (“‘965 patent”).’ The…the ‘253 patent, Claims 3 and 33 of the ‘747 patent, Claims 5 and 27 of United States Patent No. 9,561,177…actuation.” (‘253 patent at 50:65—67; ‘747 patent at 53:42—44). Elsewhere, the ‘253 patent specification …9,561,177 (“177 patent”), and Claims 1 and 22 of the ‘965 patent. They have since resolved their dispute	External link to document
2016-10-21	201		about 100 ul" as used in United States Patent Numbers 9,211,253 and 9,468,747 requires no further construction…October 2016 2:16-cv-07721-BRM-JAD 830 Patent None District Court, D. New Jersey	External link to document
2016-10-21	283	Brief	longer-asserted U.S. Patent No. 9,211,253 (“the 253 patent”).1 For each patent, Nalox-1 filed one petition…Challenged Patent Prior Art Instituted? IPR2019-00685 9,211,253 … 9,211,253 Wang No IPR2019-00687 9,211,253 …administrative patent judges is tasked with reviewing the patentability of a previously issued patent. To request… the four patents-in- suit before this Court (U.S. Patent Nos. 9,468,747 (“the ’747 patent”), 9,561,	External link to document
2016-10-21	342	Order	States Patents held by Plaintiffs: (1) Claims 7 and 9 of United States Patent Number 9,468,747 (the …the “’747 Patent”) (TX-0001) 2; (2) Claim 4 of United States Patent Number 9,561,177 (the “’177 Patent…, 24, and 25 of United States Patent Number 9,629,965 (the “’965 Patent”) (TX-0003); and (4) Claims…, 33, and 38 of United States Patent Number 9,775,838 (the “’838 Patent) (TX-0004). 1 On… ’747 Patent are INVALID; and it is further ORDERED that Claim 4 of the ’177 Patent is INVALID	External link to document

ADAPT PHARMA OPERATIONS LIMITED v. TEVA PHARMACEUTICALS USA, INC.: A Comprehensive Litigation Summary and Analysis

Background of the Case

The litigation between Adapt Pharma Operations Limited and Teva Pharmaceuticals USA, Inc. revolves around the validity of several patents held by Adapt Pharma, specifically those related to the opioid overdose medication Narcan. The case, filed in the U.S. District Court for the District of New Jersey (Case No. 2:16-cv-07721-BRM-JAD), involves claims of patent infringement and the subsequent challenge to the validity of these patents[3][4].

Parties Involved

• Plaintiffs: Adapt Pharma Operations Limited, Adapt Pharma, Inc., Adapt Pharma Limited, and Opiant Pharmaceuticals, Inc.
• Defendants: Teva Pharmaceuticals USA, Inc. and Teva Pharmaceuticals Industries Ltd.[3][4].

Nature of the Case

The case centers on the validity of specific claims from four U.S. patents: 9,468,747, 9,561,177, 9,629,965, and 9,838,692. These patents cover methods of treating opioid overdose using intranasal administration of naloxone, the active ingredient in Narcan[1][4].

Infringement and Validity

Teva Pharmaceuticals stipulated to infringement of the asserted claims but challenged the validity of these patents. The focus of the litigation shifted to determining whether the asserted claims were obvious in view of the prior art, a critical factor in patent validity under U.S. law[1][4].

Trial and District Court Decision

The district court conducted a two-week bench trial to determine the validity of the patents. After considering extensive evidence, including testimony from thirteen fact and expert witnesses, the court issued a comprehensive opinion. U.S. District Judge Brian R. Martinotti found that the asserted claims would have been obvious in view of the prior art, leading to a final judgment of invalidity[4][5].

Key Findings of the District Court

• Obviousness: The court determined that a person of ordinary skill in the art (POSA) would have been motivated to combine the prior-art references to arrive at the claimed invention.
• Prior Art: The court found that the prior art, as a whole, did not teach away from the claimed invention.
• Objective Indicia of Non-Obviousness: The court addressed Adapt’s arguments regarding objective indicia of non-obviousness, such as commercial success and long-felt but unsolved needs, but concluded that these did not override the finding of obviousness[1][4].

Appeal to the Federal Circuit

Adapt Pharma appealed the district court’s decision to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit reviewed the district court’s legal determinations de novo and its factual findings for clear error. The appellate court affirmed the district court’s decision, upholding the finding that the asserted claims were obvious in view of the prior art[1][4].

Impact of the Decision

The decision has significant implications for Adapt Pharma and the broader pharmaceutical industry. The invalidation of these patents allows Teva and potentially other generic manufacturers to produce generic versions of Narcan, which could increase accessibility and reduce costs for this critical medication[5].

Legal and Strategic Implications

• Patent Strategy: The case highlights the importance of robust patent strategies, including the need for patents to be non-obvious and novel.
• Generic Competition: The decision opens the door for generic competition, which can drive down prices and improve patient access to life-saving medications.
• Litigation Costs: The extensive litigation process, including a two-week bench trial and subsequent appeal, underscores the significant costs and complexities involved in patent litigation[4].

Conclusion

The litigation between Adapt Pharma Operations Limited and Teva Pharmaceuticals USA, Inc. serves as a pivotal example of the challenges and complexities in patent law, particularly in the pharmaceutical sector. The case emphasizes the critical importance of ensuring that patents meet the stringent criteria of non-obviousness and novelty.

Key Takeaways

• Patent Validity: The case underscores the importance of patent validity and the need for patents to withstand challenges based on obviousness.
• Generic Competition: The decision allows for generic competition, which can improve patient access to critical medications.
• Litigation Strategy: The extensive litigation process highlights the need for robust legal strategies and thorough preparation in patent cases.
• Regulatory Environment: The case reflects the evolving regulatory environment and the ongoing balance between innovation and competition in the pharmaceutical industry.

Frequently Asked Questions (FAQs)

What was the main issue in the Adapt Pharma v. Teva Pharmaceuticals case?

The main issue was whether the patents covering Adapt Pharma's opioid overdose medication Narcan were valid, specifically whether the claims were obvious in view of the prior art.

What was the outcome of the district court trial?

The district court found that the asserted claims of the patents were invalid due to obviousness in view of the prior art.

Did Adapt Pharma appeal the decision?

Yes, Adapt Pharma appealed the decision to the U.S. Court of Appeals for the Federal Circuit, which affirmed the district court’s finding.

What are the implications of this decision for the pharmaceutical industry?

The decision allows for generic competition, potentially reducing the cost and increasing the accessibility of Narcan, and highlights the importance of robust patent strategies.

How long did the bench trial last?

The bench trial lasted two weeks, during which extensive evidence was presented, including testimony from thirteen fact and expert witnesses.

Cited Sources:

1. Adapt Pharma Operations Ltd. v. Teva Pharms. USA, Inc. - JDSupra
2. Fee Application - LB Settlement
3. Adapt Pharma Operations Ltd. v. Teva Pharm. USA, Inc. - Case Law
4. ADAPT PHARMA OPERATIONS v. TEVA PHARMACEUTICALS - U.S. Court of Appeals for the Federal Circuit
5. Obviousness Doomed Narcan Patents After NJ Bench Trial - Sterne, Kessler, Goldstein & Fox P.L.L.C.