America-Israel Patent Law Blog

It’s been a while since we wrote about Angiomax (the API of which is bivalirudin).  The hiatus was because, in the wake of the “Dog Ate My Homework Act” which was part of the so-called America Invents Act in 2011, The Medicines Company was given a reprieve from its attorneys’ mistake (they missed the deadline for filing for a patent term extension because the person docketing the action listed the deadline as two months from FDA approval instead of 60 days) and its basic patent covering the active ingredient of this drug, US 5196404, was extended from July 2010 until December 2014.   

TMO actually had some additional protection: it obtained two additional US patents, 7582727 and 7598343 (discussed here and here), prior to the nominal expiration of the ‘404 patent, and listed these in the FDA Orange Book.  Unlike the ‘404 patent, the ‘727 and ‘343 patents were involved in ANDA litigation.  Now the Federal Circuit has laid those two patents to rest, apparently clearing the road for generic bivalirudin.  In a decision issued last Thursday (The Medicines Company v Hospira, Inc.), the CAFC reversed the District Court and said that the asserted claims were invalid because of the on-sale bar: more than a year before the patent application was filed, TMO had purchased the product having the requisite purity from a supplier which had used the recited process to make the product. 

Distinguishing from cases where the experimental use exception to the on-sale bar applies, the CAFC noted that these were commercially usable batches worth about $10 million apiece, and that there is no “supplier” exception to the on-sale bar, so the fact that the sale was made to TMO itself was of no avail.  Thus, said the CAFC, the claimed product was on sale more than one year before the patent applications were filed.  As Dr. McCoy would say, “He’s dead, Jim.” 

Of more interest to this reader, but not elaborated on by the court, was the characterization of the claims as product-by-process claims.  One usually thinks of product-by-process claims as being worded, “A product X which is prepared by the process of mixing A with B and heating at temperature C.”  Claim 1 of the ‘343 patent, the only independent claim of that patent at issue, certainly qualifies a p-b-p claim:

1. Pharmaceutical batches of a drug product comprising bivalirudin (SEQ ID NO: 1) and a pharmaceutically acceptable carrier, for use as an anticoagulant in a subject in need thereof, said batches prepared by a compounding process comprising:

(i) dissolving bivalirudin in a solvent to form a first solution;

(ii) efficiently mixing a pH-adjusting solution with the first solution to form a second solution, wherein the pH-adjusting solution comprises a pH-adjusting solution solvent; and

(iii) removing the solvent and pH-adjusting solution solvent from the second solution;

wherein the batches have a pH adjusted by a base, said pH is about 5-6 when reconstituted in an aqueous solution for injection, and wherein the batches have a maximum impurity level of Asp⁹-bivalirudin that does not exceed about 0.6% as measured by HPLC. [emphasis added]

Claim 1 of the ‘727 patent, however, reads:

1. Pharmaceutical batches of a drug product comprising bivalirudin (SEQ ID NO: 1) and a pharmaceutically acceptable carrier for use as an anticoagulant in a subject in need thereof, wherein the batches have a pH adjusted by a base, said pH is about 5-6 when reconstituted in an aqueous solution for injection, and wherein the batches have a maximum impurity level of Asp⁹-bivalirudin that does not exceed about 0.6% as measured by HPLC.

Where's the process?  Initially the court stated that the two patents “include product-by-process claims describing” the discovery of the process that led to the claimed invention.  But later in the decision the court seems not to distinguish between the two patents in this regard:

“We find no principled distinction between the commercial sale of products prepared by the patented method at issue in D.L. Auld Co. and the commercial sale of services that result in the patented product-by-process here. The Medicines Company paid Ben Venue for performing services that resulted in the patented product-by-process, and thus a “sale” of services occurred.” 

“Accordingly, we find that the district court clearly erred in finding the Ben Venue sale of services did not constitute a commercial sale. To find otherwise would allow The Medicines Company to circumvent the on-sale bar simply because its contracts happened to only cover the processes that produced the patented product-by-process.”

Was the CAFC construing the statement “wherein the batches have a pH adjusted by a base” in the claim 1 of the ‘727 patent as evincing a p-b-p claim?  Or was characterizing this claim as a p-b-p claim just an oversight?  The court didn’t say, and it doesn’t appear that the question is germane for the on-sale bar determination – i.e., it’s dictum.  But today’s dictum sometimes has a way of becoming tomorrow’s holding…