Glaxo Operations UK Ltd. v. Quigg

706 F. Supp. 1224, 10 U.S.P.Q. 2d (BNA) 1100, 1989 U.S. Dist. LEXIS 1668, 1989 WL 13166
CourtDistrict Court, E.D. Virginia
DecidedFebruary 17, 1989
DocketCiv. A. 88-1487-A
StatusPublished
Cited by10 cases

This text of 706 F. Supp. 1224 (Glaxo Operations UK Ltd. v. Quigg) is published on Counsel Stack Legal Research, covering District Court, E.D. Virginia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Glaxo Operations UK Ltd. v. Quigg, 706 F. Supp. 1224, 10 U.S.P.Q. 2d (BNA) 1100, 1989 U.S. Dist. LEXIS 1668, 1989 WL 13166 (E.D. Va. 1989).

Opinion

MEMORANDUM OPINION

ELLIS, District Judge.

Introduction 1

In this suit for declaratory and injunctive relief, plaintiff, the holder of a patent for an orally-administered antibiotic drug, challenges the denial of its application for a patent term extension pursuant to the Drug Price Competition and Patent Restoration Act of 1984 (the “Act”). 2 Title II of *1225 the Act, 35 U.S.C. § 156, permits extensions of the patent term for certain patented new drugs required to undergo the Food and Drug Administration’s (FDA) rigorous and often time-consuming new drug approval procedures. Such procedures often require years to complete, thereby diminishing the commercial rights provided by the patent. Acutely aware of this, Congress acted to permit extensions of the patent terms to make up some of the time consumed in the FDA approval process.

The parties’ dispute in this case presents a straightforward question of statutory interpretation. Specifically, the question presented is whether plaintiff’s patented product meets the requirement of Section 156(a)(5)(A) that the use of the product following FDA approval constitute the first commercial marketing or use. Because the essential, dispositive facts are undisputed, summary judgment is appropriate. Rule 56, Fed.R.Civ.P. For the reasons stated, the Court grants plaintiff summary judgment as to Count I and awards declaratory and injunctive relief.

Facts

Plaintiff holds Patent No. 4267320 claiming cefuroxime axetil, an orally administered antibiotic drug. It markets this patented compound as Ceftin Tablets, a registered trademark. The patent issued on May 12, 1981. As often happens, however, the New Drug Application (NDA) for Ceftin Tablets was not approved by FDA under Section 507 of the Federal Food, Drug and Cosmetic Act until December 28, 1987. To obtain this NDA approval, plaintiff was required to complete a range of tests and procedures, including toxicity tests on animals and clinical tests on humans. See generally 21 CFR §§ 312 & 314. After receiving approval from NDA, plaintiff sought an extension of the patent term. Because more than four (4) years were consumed in proceedings before the FDA, plaintiff sought the maximum two year extension of the patent term permitted by the Act. See 35 U.S.C. § 156(c). 3

The active ingredient of Ceftin Tablets is cefuroxime axetil. Unique properties of this distinct pharmaceutical compound make it therapeutically active and effective when administered orally. Cefuroxime ax-etil is an ester 4 of cefuroxime, an organic acid. This acid and its salts are claimed by plaintiff’s United States Patent No. 3,974,-153. Cefuroxime and its salt, cefuroxime sodium, are both antibiotics that are therapeutically active only when administered intramuscularly or intravenously. Neither is effective if administered orally. The FDA has previously approved NDA’s for two sodium salts of cefuroxime. Zinacef was approved in 1983 and Kefurox in 1986 *1226 and 1987. No approval has ever issued for the acid cefuroxime.

Plaintiff filed the term extension application in issue here on September 9, 1988. The Commissioner denied the approval, asserting that cefuroxime axetil was not eligible for patent term extension because the 1987 FDA approval of Ceftin Tablets was not the first permitted commercial marketing or use of the product. In support of this rejection of the application, the Commissioner stated that:

[tjhus, for the purpose of eligibility for patent term extension, an active ingredient in the acid, salt or ester form is treated as the same drug product. Applying the explicit terms of the statute to the circumstances of this application for patent term extension, it must be concluded that the active ingredient in CEFTIN is an ester of cefuroxime. A sodium salt of cefuroxime has been approved for commercial marketing or use by the FDA prior to the approval of CEFTIN. Accordingly, the permission for commercial marketing or use of the product (i.e. the active ingredient cefu-roxime axetil) after the regulatory review period was not the first permitted commercial marketing or use of the product (cefuroxime as a salt or ester) under the provision of law under which the regulatory review period occurred.

In re Glaxo Operations UK Limited, Request for Patent Term Extension Under 35 U.S.C. § 156 For U.S. Patent No. 4,267,320 at 3-4 (Sept. 9, 1988).

More recently, the Commissioner, in his initial brief on this issue, stated that upon further reflection Ceftin Tablet’s active ingredient is cefuroxime the acid, not cefu-roxime axetil the ester. The Commissioner requested a remand to add this finding to the record and to change accordingly the rationale for his decision. At oral argument, the need for a remand was unclear. Accordingly, the Court ordered further briefing to clarify the nature of the Commissioner’s proposed rationale. The Court has now reviewed the supplemental brief and concludes, on the basis of the record as a whole, that a remand is neither necessary nor warranted. Remand for agency reconsideration may be appropriate if, on a correct reading of the law, questions of fact or policy remain unresolved. Agency reconsideration may also be appropriate where there is “such failure to explain agency action as to frustrate effective judicial review,” Camp v. Pitts, 411 U.S. 138, 142-43, 93 S.Ct. 1241, 1244, 36 L.Ed.2d 106 (1972), or where the agency’s factual findings cannot be sustained on the record. See Florida Power & Light v. Lorion, 470 U.S. 729, 744, 105 S.Ct. 1598, 1607, 84 L.Ed.2d 643 (1985); Vermont Yankee Nuclear Power Corp. v. NRDC, 435 U.S. 519, 549, 98 S.Ct. 1197, 1214, 55 L.Ed.2d 460 (1978). None of these conditions obtains here. On the contrary, the Commissioner’s proposed rationale is adequately explained in his supplemental briefs. Simply put, this is a case in which undisputed material facts and unambiguous statutory language compel rejection of the Commissioner’s second rationale, as well as his first. While the Court is not compelled to consider the Commissioner’s proposed rationale, 5 it does so in the interests of good judicial husbandry and the expeditious resolution of this dispute. Also in the interests of good judicial husbandry, the Court addresses Count II of plaintiff’s complaint even though the Court’s ruling with respect to the first count provides plaintiff with all the requested relief.

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706 F. Supp. 1224, 10 U.S.P.Q. 2d (BNA) 1100, 1989 U.S. Dist. LEXIS 1668, 1989 WL 13166, Counsel Stack Legal Research, https://law.counselstack.com/opinion/glaxo-operations-uk-ltd-v-quigg-vaed-1989.