Litigation Details for Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc. (D. Nev. 2016)

Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc. (D. Nev. 2016)

Docket		Date Filed	2016-10-31
Court	District Court, D. Nevada	Date Terminated	2020-03-30
Cause	35:271 Patent Infringement	Assigned To	Miranda Mai Du
Jury Demand	None	Referred To	Nancy J. Koppe
Patents	10,278,936; 7,022,713; 8,293,727; 8,293,728; 8,318,715; 8,357,677; 8,367,652; 8,377,920; 8,399,446; 8,415,335; 8,426,399; 8,431,560; 8,440,650; 8,518,929; 8,524,698; 8,546,372; 8,617,594
Link to Docket	External link to docket

Details for Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc. (D. Nev. 2016)

Date Filed	Document No.	Description	Snippet	Link To Document
2016-10-31	1	Complaint	U.S. Patent No. 8,293,728 (“the ‘728 Patent”), U.S. Patent No. 8,318,715 (“the 7 ‘715 Patent”), U.…above. 2 33. United States Patent No. 8,293,728, entitled “METHODS OF TREATING 3 HYPERTRIGLYCERIDEMIA… Patent, the ‘335 Patent, the ‘399 Patent, 12 the ‘560 Patent, the ‘650 Patent, the ‘929 Patent, the…of the ‘728 Patent, the ‘715 Patent, the 11 ‘677 Patent, the ‘652 Patent, the ‘920 Patent, the ‘446 Patent…U.S. Patent No. 8,357,677 (“the ‘677 Patent”), U.S. Patent No. 8,367,652 (“the 8 ‘652 Patent”), U.S	External link to document
2016-10-31	135	Order	but is discussed. It is U.S. Patent No. 8,293,727 (“the ‘727 28 patent”). …the ‘715 patent”); (3) U.S. Patent No. 8,357,677 (“the ‘677 9 patent”); (4) U.S. Patent No. 8,367,652…“the ‘652 patent”); (5) U.S. Patent No. 10 8,377,920 (“the ‘920 patent”); (6) U.S. Patent No. 8,399,446…“the ‘446 patent”); (7) U.S. 11 Patent No. 8,415,335 (“the ‘335 patent”); (8) U.S. Patent No. 8,426,399… ‘399 12 patent”); (9) U.S. Patent No. 8,431,560 (“the ‘560 patent”); (10) U.S. Patent No. 13 8,	External link to document
2016-10-31	236	Motion for Summary Judgment	week.” See, e.g., Ex. 5, U.S. Patent No. 8,293,728 (“the ’728 patent”) at 3:65-4:7.1 These 11 undisputed… Ex. 6, U.S. Patent No. 8,318,715 (“the ’715 patent”), Claim 14; Ex. 7, U.S. Patent No. 8,357,677…the ’677 patent”), Claims 1, 7, and 8; Ex. 8, U.S. 19 Patent No. 8,367,652 (“the ’652 patent”), Claims…, U.S. Patent No. 8,431,560 (“the ’560 patent”), Claims 4, 7, and 17; Ex. 10, U.S. Patent No. 8,518,929…noninfringement as to all 15 asserted patent 3 claims from six related patents that Amarin contends cover methods	External link to document
2016-10-31	247	Response	728 pat. U.S. Patent No. 8,293,728 3 ’715 pat. U.S. Patent No. 8,318,715 4 ’…677 pat. U.S. Patent No. 8,357,677 5 ’652 pat. U.S. Patent No. 8,367,652 6 ’560… during prosecution of Amarin’s patent 6 applications, the Patent Office repeatedly found that the…comply with section 112 of the Patent Act, which mandates that a patent’s 9 “specification shall contain…render 15 the patents invalid as a matter of law. On their face, Amarin’s patents—which were filed	External link to document
2016-10-31	252	Response	OF ABBREVIATIONS 2 ’728 Patent U.S. Patent No. 8,293,728 (filed Jan. 12, 2012) (Defs… 16 of the '728 Patent 25 (Defs.' Ex. 5); Claim 14 ofthe '715 Patent (Defs.' Ex. 6);… the '677 Patent (Defs.' Ex. 7); Claims 1, 7, and 8 of the '652 Patent (Defs.' Ex…26 '560 Patent (Defs.' Ex. 9); an d Claims 1 and 5 of the '929 Patent (Defs.' Ex. …well beyond 12 weeks, and the patent specification (e.g., in the Patent Example), 14 describes treatment	External link to document

Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc.: A Comprehensive Litigation Summary and Analysis

Background of the Case

The case of Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc. is a significant patent infringement dispute that has unfolded under the Hatch-Waxman Act. Amarin Pharma, the manufacturer of Vascepa® (icosapent ethyl), a drug derived from fish oil used to treat severe hypertriglyceridemia and, subsequently, cardiovascular risk, brought the lawsuit against Hikma Pharmaceuticals USA Inc. for alleged induced infringement of Amarin's patents[3][5].

Key Allegations and Claims

Amarin alleged that Hikma induced infringement by actively encouraging physicians to prescribe its generic icosapent ethyl product for the off-label cardiovascular (CV) indication, despite Hikma not having FDA approval for this specific use. The allegations centered on Hikma's label, public statements, and marketing materials, which Amarin claimed encouraged the off-label use[3][5].

District Court Ruling

In November 2020, shortly after Hikma launched its generic icosapent ethyl product, Amarin filed the lawsuit. The District Court granted Hikma's motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. The court determined that Amarin's complaint did not adequately plead that Hikma had taken "affirmative steps" to induce infringement. The court also noted that Hikma's label did not recommend, encourage, or promote the alleged off-label use[1][3].

Federal Circuit Appeal

Amarin appealed the District Court's decision to the Federal Circuit. The Federal Circuit reversed the District Court's judgment, finding that Amarin's allegations plausibly stated a claim for induced infringement. The appellate court emphasized that the combination of Hikma's label, public statements, and marketing materials, rather than the label alone, supported Amarin's claims[1][3][5].

Analysis of Hikma’s Label and Marketing Materials

The Federal Circuit focused on several key aspects of Hikma's labeling and marketing:

• Clinical Studies Section: The clinical studies section of Hikma's label described statin-treated patients with cardiovascular event histories and lipid levels similar to those covered by Amarin's patents. This was seen as teaching physicians that the product could be prescribed to treat cardiovascular risk, especially since the patient populations for the severe hypertriglyceridemia (SH) and CV indications overlap[1][5].

• Removal of CV Limitation of Use: Although the FDA approved the removal of the CV limitation of use from Vascepa's label, it did not authorize Hikma to do the same. Hikma's removal of this limitation and inclusion of warnings about potential cardiovascular side effects were interpreted as communicating to physicians that the generic product could be used for the off-label CV indication[1][5].

• Public Statements and Marketing Materials: Hikma's press releases consistently referred to its product as a "generic equivalent to Vascepa®," which the Federal Circuit saw as evidence that Hikma was encouraging the off-label use. This, combined with the label content, supported the claim of induced infringement[1][3][5].

Procedural Distinctions and Precedent

The Federal Circuit distinguished this case from other Hatch-Waxman Act cases, particularly noting that this was not a traditional Hatch-Waxman case but rather a straightforward induced infringement case. The court also highlighted that this case reached the appellate stage after a motion to dismiss, without the benefit of discovery, which is unusual[5].

Judicial Rationale

Judge Lourie of the Federal Circuit emphasized that Amarin's complaint sufficiently alleged direct infringement by healthcare providers and Hikma's intent and knowledge to induce that infringement. The court's focus was on whether Hikma "actively" induced healthcare providers' direct infringement, which they found to be plausibly alleged by Amarin[3].

Impact and Implications

The Federal Circuit's decision has significant implications for pharmaceutical companies and generic drug manufacturers. It underscores the importance of careful labeling and marketing practices to avoid inducing off-label use that could infringe on existing patents. This case also highlights the complexities and nuances involved in patent infringement litigation, particularly in the context of the Hatch-Waxman Act[1][3][5].

Key Takeaways

• Induced Infringement Claims: The case emphasizes that induced infringement claims can be supported by a combination of label content, public statements, and marketing materials.
• Labeling and Marketing Practices: Pharmaceutical companies must be cautious in their labeling and marketing to avoid encouraging off-label uses that could infringe on patents.
• Procedural Considerations: The case highlights the differences in procedural stages and how these can impact the analysis of induced infringement claims.
• Federal Circuit Rulings: The Federal Circuit's decision sets a precedent for how induced infringement claims are evaluated in the context of pharmaceutical patents.

Frequently Asked Questions (FAQs)

Q: What was the primary issue in the Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc. case?

A: The primary issue was whether Hikma Pharmaceuticals induced infringement by encouraging physicians to prescribe its generic icosapent ethyl product for an off-label cardiovascular indication without FDA approval.

Q: How did the District Court rule in this case?

A: The District Court granted Hikma's motion to dismiss, finding that Amarin's complaint failed to plead inducement based on Hikma's label and public statements.

Q: Why did the Federal Circuit reverse the District Court's decision?

A: The Federal Circuit reversed the decision because it found that Amarin's allegations, when considering the combination of Hikma's label, public statements, and marketing materials, plausibly stated a claim for induced infringement.

Q: What specific aspects of Hikma’s labeling and marketing were critical in the Federal Circuit’s decision?

A: The clinical studies section of the label, the removal of the CV limitation of use, and Hikma’s public statements and marketing materials were key factors.

Q: What are the broader implications of this case for pharmaceutical companies?

A: The case underscores the need for careful labeling and marketing practices to avoid inducing off-label use that could infringe on existing patents, and it highlights the complexities of patent infringement litigation under the Hatch-Waxman Act.

Cited Sources

1. JDSupra: Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. (Fed. Cir. 2024)
2. Casetext: Amarin Pharma, Inc. v. Hikma Pharm. U.S. Inc. (D. Nev. 2021)
3. Federal Circuit Blog: Opinion Summary - Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. (2024)
4. Supreme Court: Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. -- Appendix to cert. petition (2020)
5. Robins Kaplan LLP: Amarin Pharma, Inc. v. Hikma Pharms. USA Inc. (2024)