Shionogi et. al. v. Nostrum Laboratories et. al.

7/31/2019 Shionogi et. al. v. Nostrum Laboratories et. al.

1/47

Liza M. WalshRukhsanah L. Singh

CONNELL FOLEY LLP

85 Livingston AvenueRoseland, New Jersey 08608

(973) 535-0500

David A. Manspeizer

David B. Bassett

Christopher R. Noyes

WILMER CUTLER PICKERINGHALE & DORR LLP

399 Park Avenue

New York, New York 10022(212) 230-8800

Attorneys for Plaintiff Shionogi Inc.

Robert J. FettweisTRESSLER LLP

744 Broad Street, Suite 1510

Newark, New Jersey 07102(973) 848-2900

Gary E. HoodMark T. Deming

POLSINELLI SHUGHART PC

161 N. Clark Street, Suite 4200

Chicago, Illinois 60601(312) 819-1900

Graham L.W. DayRobyn Ast-Gmoser


100 Fourth Street, Suite 1000St. Louis, Missouri 63102

(314) 889-8000

Attorneys for Plaintiffs Andrx Corporation, Andrx

Pharmaceuticals, Inc. (N/K/A Watson

Laboratories, Inc.-Florida), Andrx

Pharmaceuticals, L.L.C., Andrx Laboratories (NJ),

Inc., Andrx EU Ltd., and Andrx Labs, L.L.C.

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW JERSEY

SHIONOGI INC., ANDRX

CORPORATION, ANDRX

PHARMACEUTICALS, INC. (N/K/A

WATSON LABORATORIES, INC.-FLORIDA), ANDRX

PHARMACEUTICALS, L.L.C., ANDRX

LABORATORIES (NJ), INC., ANDRX EULTD., AND ANDRX LABS, L.L.C.,

Plaintiffs,

v.

NOSTRUM LABORATORIES, INC. ANDNOSTRUM PHARMACEUTICALS LLC,

Defendants.

)

))

)

)

))

)

))

)

))

)

))

)

)

Civil Action No. ___________


2/47

COMPLAINT FOR PATENT INFRINGEMENT

For their complaint herein, Plaintiffs allege as follows:

1. Shionogi Inc. (Shionogi) is a corporation organized and existing underthe laws of the State of Delaware, having a principal place of business at 300 Campus Drive,

Florham Park, New Jersey 07932.

2. Andrx Corporation (Andrx Corp.) is a Delaware corporation andsubsidiary of Watson Pharmaceuticals, Inc., having a place of business at 4955 Orange Drive,

Davie, Florida 33314. Andrx Pharmaceuticals, Inc. (Andrx Pharmaceuticals) is a Florida

corporation and subsidiary of Andrx Corp., now known as Watson Laboratories, Inc.-Florida,

having a place of business at 4955 Orange Drive, Davie, Florida 33314. Andrx Pharmaceuticals,

L.L.C. and Andrx Labs, L.L.C. are Delaware limited liability companies and subsidiaries of

Andrx Corp., having a place of business at 4955 Orange Drive, Davie, Florida 33314. Andrx

Laboratories (NJ), Inc. is a Delaware corporation and a subsidiary of Andrx Corp., having a

place of business at 8151 Peters Road, 4th Floor, Plantation, Florida 33324. Andrx EU Limited

is a UK corporation and subsidiary of Andrx Corp., having a place of business at 8151 Peters

Road, 4th Floor, Plantation, Florida 33324. The Andrx companies are hereinafter referred to

collectively as Andrx.

3. Upon information and belief, Defendant Nostrum Laboratories, Inc.(Nostrum Labs.) is a corporation organized and existing under the laws of New Jersey, having

a principal place of business at 1800 N Topping Ave., Kansas City, MO 64120. Upon

information and belief, Defendant Nostrum Labs. manufactures, and/or distributes generic drugs

for sale and use throughout the United States, including in this judicial district.

4. Upon information and belief, Defendant Nostrum Pharmaceuticals, LLC(Nostrum Pharma) is a corporation organized and existing under the laws of Delaware, with a

2


3/47

principal place of business at 11D Jules Lane, New Brunswick, NJ 08901. Upon information

and belief, Defendant Nostrum Pharma, itself and through its wholly-owned subsidiary and agent

Defendant Nostrum Labs. (collectively Nostrum), manufactures generic drugs for sale and use

throughout the United States, including in this judicial district.

JURISDICTION AND VENUE

5. This action arises under the patent laws of the United States, 35 U.S.C. 100 et seq., and jurisdiction exists under 28 U.S.C. 1331 and 1338(a).

6. This Court has personal jurisdiction over Defendant Nostrum Pharma byvirtue of, inter alia, its systematic and continuous contacts with New Jersey and because it has a

principal place of business in New Jersey.

7. Upon information and belief, Nostrum Pharma has also previouslysubmitted itself to the jurisdiction of this Court, by initiating suit in this Court. See, e.g.,

Nostrum Pharms. LLC v. F.D.A., Civ. Action No. 11-3111 (JAP/TJB) (D.N.J.) (complaint filed

on May 27, 2011).

8. This Court has personal jurisdiction over Defendant Nostrum Labs. byvirtue of, inter alia, its systematic and continuous contacts with New Jersey and because it has

submitted itself to the jurisdiction of courts in New Jersey by virtue of its incorporation under

New Jersey law.

9. Venue is proper in this Court under 28 U.S.C. 1391(c) and 1400(b).PATENTS IN SUIT

10. Andrx is the owner of United States Patent No. 6,099,859 (the 859patent), which was duly and legally issued on August 8, 2000, and is titled Controlled Release

Oral Tablet Having A Unitary Core. Shionogi has an exclusive license under the 859 patent in

the United States. A copy of the 859 patent is attached as Exhibit A.

3


4/47

11. Andrx is the owner of United States Patent No. 6,866,866 (the 866patent), which was duly and legally issued on March 15, 2005, and is titled Controlled Release

Metformin Compositions. Shionogi has an exclusive license under the 866 patent in the

United States. A copy of the 866 patent is attached as Exhibit B.

ACTS GIVING RISE TO THIS ACTION

12. Andrx Labs is the holder of New Drug Application (NDA) No. 21-574,by which the United States Food and Drug Administration (FDA) granted approval for 500 mg

and 1000 mg extended-release metformin hydrochloride tablets. The metformin hydrochloride

tablets described in Andrxs NDA are indicated as an adjunct to diet and exercise to lower blood

glucose to improve glycemic control in adults with Type 2 diabetes mellitus. Shionogi markets

these tablets in the United States under the tradename Fortamet.

13. Upon information and belief, Nostrum submitted to the FDA AbbreviatedNew Drug Application (ANDA) No. 203-832, which included a certification with respect to

the 859 and 866 patents under the Federal Food, Drug, and Cosmetic Act, 21 U.S.C.

355(j)(2)(A)(vii)(IV), seeking approval to manufacture, use, and sell 500 mg and 1000 mg

extended-release metformin hydrochloride tablets (the ANDA products) prior to the expiration

of those patents.

14. Upon information and belief, Nostrum Pharma participated in studies andclinical research that was reported in ANDA No. 203-832. Further, upon information and belief,

Nostrum Pharma directed the activities of Nostrum Labs. complained of herein, including the

filing of ANDA No. 203-832.

15. On or about May 24, 2012, Nostrum Labs. sent a letter (Notice Letter)to Shionogi, Pharmaceuticals, Inc., Andrx Pharmaceuticals, LLC and Andrx Laboratories, LLC

in which it represented that it had filed an ANDA for the ANDA products, including

4


5/47

certifications with respect to the 859 and 866 patents, and that it sought approval of its ANDA

prior to the expiration of those patents.

16. This action is being commenced within forty-five days from the date ofthe receipt of the Notice Letter by Shionogi, May 30, 2012.

FIRST COUNT FOR INFRINGEMENT

OF UNITED STATES PATENT NO. 6,099,859

17. Plaintiffs reallege paragraphs 1-16 as if fully set forth herein.18. Nostrums ANDA Product is covered by one or more claims of the 859

patent.

19. Nostrums submission of ANDA No. 203-832 for the purpose of obtainingapproval to engage in the commercial manufacture, use, offer for sale, and/or sale of Nostrums

ANDA Product before the expiration of the 859 patent is an act of infringement of the 859

patent.

20. The commercial manufacture, use, offer for sale, sale and/or importationof Nostrums ANDA Product would infringe one or more claims of the 859 patent.

21. Unless Nostrum is enjoined from infringing the 859 patent, Plaintiffs willsuffer irreparable injury. Plaintiffs have no adequate remedy at law.

SECOND COUNT FOR INFRINGEMENT

OF UNITED STATES PATENT NO. 6,866,866

22. Plaintiffs reallege paragraphs 1-21 as if fully set forth herein.23. Nostrums ANDA Product is covered by one or more claims of the 866

patent.

24. Nostrums submission of ANDA No. 203-832 for the purpose of obtainingapproval to engage in the commercial manufacture, use, offer for sale, and/or sale of Nostrums

5


6/47

ANDA Product before the expiration of the 866 patent is an act of infringement of the 866

patent.

25. The commercial manufacture, use, offer for sale, sale and/or importationof Nostrums ANDA Product would infringe one or more claims of the 866 patent.

26. Unless Nostrum is enjoined from infringing the 866 patent, Plaintiffs willsuffer irreparable injury. Plaintiffs have no adequate remedy at law.

PRAYER FOR RELIEF

27. Wherefore, Plaintiffs request that:a. Judgment be entered that Defendants have infringed the 859 and

866 patents by filing the aforesaid ANDA;

b. Judgment be entered that the making, using, selling, offering forsale, or import of Nostrums ANDA product would infringe the 859 and 866 patents;

c. A permanent injunction be issued, pursuant to 35 U.S.C. 271(e)(4)(B), restraining and enjoining said Defendants, their officers, agents, attorneys, and

employees, and those acting in privity or concert with them, from engaging in the commercial

manufacture, use, offer to sell, or sale within the United States, or importation into the United

States, of the drugs or methods of administering drugs claimed in the 859 and 866 patents;

d. An order be issued pursuant to 35 U.S.C. 271(e)(4)(A) that theeffective date of any approval of ANDA No. 203-832 be a date that is not earlier than the

expiration date of the 859 and 866 patents, or any later expiration of exclusivity for the 859

and 866 patents to which Plaintiffs are or become entitled;

e. Judgment be entered that this case is exceptional, and thatPlaintiffs are entitled to their reasonable attorney fees pursuant to 35 U.S.C. 285; and

6


7/47

7

f. They be granted such other and further relief as the Court maydeem just and proper under the circumstances.

Dated: July 13, 2012

CONNELL FOLEY LLP

By: s/Liza M. WalshLiza M. Walsh

Rukhsanah L. Singh


(973) 535-0500

David A. ManspeizerDavid B. Bassett

Christopher R. Noyes

WILMER CUTLER PICKERINGHALE & DORR LLP

399 Park Avenue

New York, New York 10022(212) 230-8800


TRESSLER LLP

By: s/Robert J. Fettweis

Robert J. Fettweis



Gary E. Hood

Mark T. DemingPOLSINELLI SHUGHART PC

161 N. Clark Street, Suite 4200

Chicago, Illinois 60601(312) 819-1900



100 Fourth Street, Suite 1000

St. Louis, Missouri 63102(314) 889-8000

Attorneys for Plaintiffs Andrx

Corporation, Andrx Pharmaceuticals,

Inc. (N/K/A Watson Laboratories, Inc.-

Florida), Andrx Pharmaceuticals,

L.L.C., Andrx Laboratories (NJ), Inc.,

Andrx EU Ltd., and Andrx Labs, L.L.C.


8/47

LOCAL CIVIL RULE 11.2 CERTIFICATION

I certify that, to the best of my knowledge, the matter in controversy between these

parties is not the subject of any other pending or anticipated litigation in any court or arbitration

proceeding, nor are there any non-parties known to Plaintiffs that should be joined to this action,

with the exception that the patents at issue in this Complaint are the subject of the following

actions that have been pending in the United States District for the District of Delaware:

Sciele Pharma, Inc. et al.v. Lupin Ltd. et al., C.A. No. 09-037 (RBK/JS) (D. Del.) (filedJanuary 15, 2009); and

Shionogi Pharma, Inc. et al. v. Mylan, Inc. et al.. C.A. No. 10-135 (RBK/JS) (D. Del.)

(filed February 18, 2010).


CONNELL FOLEY LLP

By: s/Liza M. Walsh

Liza M. Walsh

Rukhsanah L. Singh


(973) 535-0500

David A. Manspeizer

David B. Bassett

Christopher R. NoyesWILMER CUTLER PICKERING

HALE & DORR LLP

399 Park Avenue

New York, New York 10022(212) 230-8800


TRESSLER LLP


Robert J. Fettweis





161 N. Clark Street, Suite 4200Chicago, Illinois 60601

(312) 819-1900



100 Fourth Street, Suite 1000St. Louis, Missouri 63102

(314) 889-8000

2


9/47







LOCAL CIVIL RULE 201.1 CERTIFICATION

I hereby certify that the above-captioned matter is not subject to compulsory arbitration

in that declaratory and injunctive relief is sought.


CONNELL FOLEY LLP

By: s/Liza M. WalshLiza M. Walsh

Rukhsanah L. Singh


(973) 535-0500

David A. Manspeizer

David B. BassettChristopher R. Noyes

WILMER CUTLER PICKERING

HALE & DORR LLP399 Park Avenue

New York, New York 10022

(212) 230-8800


TRESSLER LLP


Robert J. Fettweis




POLSINELLI SHUGHART PC161 N. Clark Street, Suite 4200

Chicago, Illinois 60601

(312) 819-1900

Graham L.W. Day

Robyn Ast-Gmoser

POLSINELLI SHUGHART PC100 Fourth Street, Suite 1000

St. Louis, Missouri 63102

(314) 889-8000







2


10/47

EXHIBIT A


11/47


12/47


13/47


14/47


15/47


16/47


17/47


18/47


19/47


20/47


21/47


22/47


23/47


24/47


25/47


26/47

EXHIBIT B


27/47


28/47


29/47


30/47


31/47


32/47


33/47


34/47


35/47


36/47


37/47


38/47


39/47


40/47


41/47


42/47


43/47


44/47


45/47


46/47


47/47

Shionogi et. al. v. Nostrum Laboratories et. al.

Documents

Transcript of Shionogi et. al. v. Nostrum Laboratories et. al.