ELI LILLY AND COMPANY v. TEVA PARENTERAL MEDICINES, INC. et al

Filing 419

FINDINGS OF FACT AND CONCLUSIONS OF LAW FOLLOWING SECOND BENCH TRIAL HELD 5/28/2015. Based upon the foregoing findings of fact and conclusions of law, the Court concludes that Lilly has shown by a preponderance of the evidence that the Asserted Cla ims of the '209 patent would be infringed by the Defendants' ANDA Products based upon inducement of infringement by a single actor, the physician administering pemetrexed disodium in accordance with the claimed methods. Therefore, the Co urt finds that Defendants' ANDA Products indirectly infringe the Asserted Claims of the '209 patent, and finds in favor of Lilly and against Defendants. Final judgment shall issue separate from this Entry (S.O.). Signed by Judge Tanya Walton Pratt on 8/25/2015.(MAC)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
ELI LILLY AND COMPANY,
Plaintiff,
v.
TEVA PARENTERAL MEDICINES, INC.,
APP PHARMACEUTICALS, LLC,
PLIVA HRVATSKA D.O.O.,
TEVA PHARMACEUTICALS USA INC.,
BARR LABORATORIES, INC.,
Defendants.
______________________________________
ELI LILLY AND COMPANY
1:11-cv-00942-TWP-TAB,
Consol Plaintiff,
v.
APP PHARMACEUTICALS, LLC
1:11-cv-00942-TWP-TAB,
Consol Defendant
v.
FRESENIUS KABI USA, LLC
1:15-cv-00096-TWP-DKL

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Case No. 1:10-cv-01376-TWP-DKL

Consol Defendant.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
FOLLOWING SECOND BENCH TRIAL HELD MAY 28, 2015
This is a Hatch-Waxman patent infringement action brought by Eli Lilly and Company
(“Lilly”), the owner of U.S. Patent No. 7,772,209 (the “‘209 patent”), against Defendants Teva
Parenteral Medicines, Inc. (“Teva Parenteral”), Teva Pharmaceuticals USA, Inc. (“Teva

Pharmaceuticals”) (collectively with Teva Parenteral, “Teva”), APP Pharmaceuticals, LLC
(“APP”), Barr Laboratories, Inc. (“Barr”), and Pliva Hrvatska D.O.O. (“Pliva”) (collectively,
“Defendants”) arising out of Defendants’ filing of Abbreviated New Drug Applications
(“ANDAs”) with the FDA seeking approval to market the pemetrexed disodium products
identified in Teva’s ANDAs Nos. 90-352 and 90-674, APP’s ANDA No. 90-384, and Barr’s and
Pliva’s ANDA No. 91-111 (collectively, the “ANDA Products”) and covered under the ‘209
patent. The ‘209 patent describes a method of administering a chemotherapy drug, pemetrexed
disodium (“pemetrexed”), with vitamins, which is marketed by Lilly under the trade name
ALITMA®.
This matter was before the Court for a second bench trial on May 28, 2015, on the issue of
infringement of claims 9, 10, 12, 14, 15, 18, 19 and 21 (the “Asserted Claims”) of the ‘209 patent”.
During the first trial, the parties jointly stipulated to induced infringement and proceeded to trial
only on the issue of validity. As part of their stipulation, however, defendants reserved the right
to litigate infringement if the Supreme Court granted the then-pending petition for writ of certiorari
in Lime-light Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014) and reversed or
vacated the Federal Circuits decision. Following the United States Supreme Court’s decision in
Akamai, the parties jointly moved to remand their pending appeal so that they could litigate the
issue of infringement.
FINDINGS OF FACT
The Court has set forth the facts of this case in its ruling from the first bench trial on the
issue of validity, including the history of the development of antifolate chemotherapy and
specifically ALITMA®, and thus the facts are not repeated in detail here. (See Filing No. 336.)

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The following constitutes the basic facts giving rise to this infringement action, and the relevant
factual findings as it relates to the second bench trial on the issue of indirect infringement.
The patent-in-suit is U.S. Patent No. 7,772,209, which was issued to Lilly on August 10,
2010, and Lilly is the current owner of the ‘209 patent. The ‘209 patent covers the method of
administration of ALIMTA®, requiring that physicians co-administer the drug with folic acid and
vitamin B12 to reduce the incidence of patient toxicity caused by pemetrexed.

Lilly sells

pemetrexed in the United States under the trademark ALIMTA® for treatment of specific types of
lung cancer and mesothelioma. The Defendants in this case seek FDA approval to market generic
forms of pemetrexed, and further seek to sell their pemetrexed products with prescribing
information (TX 3018) and patient information (TX 3017) that provides instructions to both
doctors and patients that is identical to the methods described in the ‘209 patent.
Lilly is asserting claims 9, 10, 12, 15, 18, 19, and 21 of the ‘209 patent with respect to the
ANDA Products. TX 1 at cols. 11-12. Each claim requires pretreatment with a specified amount
of folic acid, up to 1000 µg, and with vitamin B 12 in the amount of 55-1,500 µg in claims 12, 14
and 21, and 1000 µg in claims 15, 18, and 19, prior to administering pemetrexed. Claims 19, 21,
and 22 further require a specific schedule for those pretreatments, and claims 15, 18 and 19 require
administration of vitamin B12 by intramuscular injection. The Defendants’ product labeling for
their proposed generic versions of ALITMA® instructs doctors to follow exactly the claimed
regimen, as the ANDA Products will be required to be distributed with materially identical labeling
as that for ALITMA®. See 21 U.S.C. § 355(j)(2)(A)(v).
The primary focus of the infringement trial is on whether the steps of the claimed methods
may be attributed to a single actor, thus supporting a finding that Defendants would induce
infringement of the Asserted Claims. Specifically, the parties dispute whether physicians will

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directly infringe the patent by directing or controlling the administration of folic acid to patients.
Claim 12 of the ‘209 patent describes an improved method for administering pemetrexed
disodium, comprising “a) administration of between 3500 µg and about 1000 µg of folic acid prior
to the first administration of pemetrexed disodium; b) administration of about 500 µg to about
1500 µg of vitamin B12, prior to the first administration of pemetrexed disodium; and c)
administration of pemetrexed disodium.” TX. 1 at col. 11-12. The prescribing information for
ALITMA® states that physicians administering the treatment should “instruct patients to initiate
folic acid 400 mcg to 1000 mcg orally once daily beginning 7 days before the first dose of
ALITMA®.” TX 3018 at 2. The instructions also state that physicians should “[a]dminister
vitamin B12 1 mg intramuscularly 1 week prior to the first dose of ALITMA and every 3 cycles
thereafter” and that physicians should “[a]dminister dexamethasone 4 mg by mouth twice daily
the day before, the day of, and the day after ALITMA administration.” Id. Both Lilly’s and the
Defendants’ experts, Dr. Bruce A. Chabner, M.D. and Dr. Thomas K. Schulz, M.D., agreed that,
following these labels, the doctor or other medical professional will administer the vitamin B 12 by
injection, and pemetrexed by infusion. Tr. 138, 139, 141, 189. However, it is the patient, at the
instruction of the physician, who must obtain and take the folic acid.
I.
A.

CONCLUSIONS OF LAW

History of the Proceedings
In Hatch-Waxman actions, the issue of infringement is typically litigated before the generic

companies have approval for their product and thus before they have sold any of the drug at issue.
Generic manufacturers, such as Defendants, do not treat patients and therefore do not directly
infringe; rather, Defendants may be held liable for infringement under 35 U.S.C. § 271(b) if they
actively induce infringement of the ‘209 patent. As stated earlier, Defendants previously stipulated

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that under the Court’s claim construction (Filing No. 115) and under the then-current laws of
infringement at the time of the first trial on August 19-29, 2013, the sale of its ANDA Products, in
accordance with the proposed labeling for each of those respective ANDA Products, would
infringe the Asserted Claims of the ‘209 patent, to the extent those claims were found valid and
enforceable. The parties reserved the right to litigate the issue of infringement in the event that
the Supreme Court granted the then-pending petition for writ of certiorari in Akamai Techs. v.
Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc), and reversed or vacated the
Federal Circuit’s decision in Akamai.
On March 31, 2014, this Court issued a ruling finding that the Defendants had failed to
show by clear and convincing evidence that the Asserted Claims of the ‘209 patent were invalid,
finding in favor of Lilly that the Asserted Claims of the ‘209 patent are valid and enforceable.
(Filing No. 336). Subsequent to the Court’s ruling and issuance of final judgment, Defendants
appealed this Court’s ruling to the Federal Circuit. However, the parties jointly moved to remand
the appeal in order to litigate the issue of infringement in light of the Supreme Court’s decision in
Limelight Networks, Inc. v. Akamai Techs., Inc., 1134 S.Ct. 2111 (2014), in which the Supreme
Court reversed the Federal Circuit’s decision, and remanded the case to the Federal Circuit. The
Supreme Court held that for direct infringement to occur—a requirement for finding inducement
of infringement under § 271(b)—“performance of all of the claimed steps [must] be attributed to
a single person.” Id. at 2118.
Subsequent to the Supreme Court’s ruling, the Federal Circuit issued a panel decision in
Akamai Techs., Inc. v. Limelight Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015), in which it held
there was no “divided infringement” under 35 U.S.C. § 271(a) where the patentee failed to
demonstrate that the competitor’s customers were acting as agents of or otherwise contractually

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obligated to the competitor, or that the customers were acting in a joint enterprise when performing
some steps of the patented method. Akamai Technologies, Inc. v. Limelight Networks, Inc., 786
F.3d 899, 915 (Fed. Cir. 2015) reh’g en banc granted, opinion vacated sub nom. Akamai
Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372, 2015 WL 4759378 (Fed. Cir. Aug.
13, 2015) and on reh’g en banc sub nom. Akamai Technologies, Inc. v. Limelight Networks, Inc.,
No. 2009-1372, 2015 WL 4760450 (Fed. Cir. Aug. 13, 2015). A petition for rehearing en banc
was filed by the plaintiffs-appellants in Akamai, which was granted by the Federal Circuit court.
Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372, 2015 WL 4759378, at *1
(Fed. Cir. Aug. 13, 2015). The Federal Circuit, in an en banc per curiam opinion, unanimously
set forth the law of divided infringement under 35 U.S.C. § 271(a) and vacated the Akamai panel
decision. Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372, 2015 WL
4760450 (Fed. Cir. Aug. 13, 2015) (en banc) (per curiam). The Federal Circuit also overruled its
prior case law regarding divided infringement, “[t]o the extent [those] prior cases formed the
predicate for the vacated panel decision,” and no longer limited § 271(a) to principal-agent
relationships, contractual arrangements, and joint enterprises, as the vacated panel decision held.
Id. at *2, *4 n.3. Thus, for purposes of this case, the Court must apply this most current articulation
of the law of divided infringement as stated by the Federal Circuit in its most recent ruling.
B.

Current Articulation of the Law
Liability for inducement of infringement is predicated on a finding of direct infringement

by a third party.

Limelight, 134 S.Ct. at 2117. Under 35 U.S.C. § 271(a), direct patent

infringement occurs where all steps of a claimed method are performed by or attributable to a
single entity. Akamai, 2015 WL 4760450 at *1. “Where more than one actor is involved in
practicing the steps, a court must determine whether the acts of one are attributable to the other

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such that a single entity is responsible for the infringement.” Id. On a claim for direct infringement
of a method patent, the court will hold an entity responsible for others’ performance of method
steps under two circumstances: (1) where that entity directs or controls others’ performance, and
(2) where the actors form a joint enterprise. Id. With respect to the former requirement, the Federal
Circuit concluded, in its en banc ruling, that “liability under § 271(a) can also be found when an
alleged infringer conditions participation in an activity or receipt of a benefit upon performance of
a step or steps of a patented method and establishes the manner or timing of that performance.”
Id. In those instances, the third party’s actions are attributed to the alleged infringer “such that the
alleged infringer becomes the single actor chargeable with direct infringement.”

Id. This

determination is a question of fact to be made by this Court.
In Akamai, the plaintiff filed a patent infringement suit against the defendant, alleging
infringement of a patent which claimed methods for delivering content over the Internet. The
parties agreed that the defendant’s customers—not the defendant itself—performed the “tagging”
and “serving” steps in the claimed method of the patent-in-suit. At the trial court, the jury found
that the defendant was responsible for its customers’ activities, and was therefore liable for direct
infringement. Relying upon the Federal Circuit’s ruling in Muniauction, Inc. v. Thomson Corp.,
532 F.3d 1318 (Fed. Cir. 2008), the district court granted the defendant’s motion for
reconsideration, and held that as a matter of law there could be no liability. The Federal Circuit,
in its recent en banc decision, reversed and reinstated the jury verdict, finding that the jury had
substantial evidence from which it could find that the defendant directed or controlled its
customers’ performance of each remaining method step not performed by the defendant, such that
all steps of the method were attributable to the defendant. Akamai, 2015 WL 4760450 at *3.
Specifically, the Federal Circuit determined that there was substantial evidence demonstrating that

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the defendant conditioned its customers’ use of its content delivery network upon its customers’
performance of the tagging and serving steps of the patent method, and that the defendant
established the manner or timing of its customers’ performance. Id. Because the customers were
not merely taking the defendant’s guidance and acting independently on their own, but rather had
to perform the method steps in order to avail themselves of the defendant’s service, the court found
that the defendant was liable for direct infringement. Id. at *3-4.
Although the instant case involves the administration of a medical treatment, the factual
circumstances are sufficiently analogous to those in Akamai to support a finding of direct
infringement by physicians under § 271(a), and thus inducement of infringement by Defendants
under § 271(b), under the legal standard recently set forth by the Federal Circuit. Defendants,
relying upon now overruled case law on divided infringement, argue that the actions of the patient
in taking folic acid prior to pemetrexed treatment cannot be attributed to the physician because the
physician does not physically place the folic acid into the patients’ mouth, and because patients
are instructed to obtain folic acid, either by prescription or over the counter, and take it on their
own. Although the parties present extensive arguments as to whether this constitutes the physician
“administering” the folic acid, whether or not this satisfies the definition of “administer” is not
relevant. What is relevant is whether the physician sufficiently directs or controls the acts of the
patients in such a manner as to condition participation in an activity or receipt of a benefit—in this
case, treatment with pemetrexed in the manner that reduces toxicities—upon the performance of a
step of the patented method and establishes the manner and timing of the performance. Defendants
argue that there is no way of knowing whether the patient will or will not actually take the folic
acid, thus the physician lacks “control or direction” over this step of the patented process.
However, as stated by the Supreme Court, “the patent is not infringed unless all the steps are

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carried out” and “[e]ach element contained in a patent claim is deemed material to defining the
scope of the patented invention.” Limelight, 134 S. Ct. at 2117 (quoting Warner–Jenkinson Co. v.
Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997)). Thus, the Court must assume that all steps
of the Asserted Claims of the ‘209 patent will be carried out, and the only relevant question is
whether the actions of the patient in taking folic acid as instructed may be attributable to the
physician as a single actor.
One of the key steps set forth in the ‘209 patent is the administration of folic acid to the
patient prior to the administration of pemetrexed.

This is not merely a suggestion or

recommendation, but a critical step in the patented method that has a specific purpose and direct
impact on the outcome of the patented method. TX 1, at col. 11-12. The prescribing information
requires physicians to “[i]nstruct patients to initiate folic acid 400 mcg to 1000 mcg orally once
daily beginning 7 days before the first dose of ALITMA®.” TX 3018 at 2. Additionally, the patient
information states “[i]t is very important to take folic acid . . . during your treatment with
ALITMA to lower your chances of harmful side effects. You must start taking 400-1000
micrograms of folic acid every day for at least 5 days out of the 7 days before your first dose of
ALITMA.” TX. 3017 at 2 (emphasis in original). It is clear from the patent, the prescribing
information, and the patient information that taking folic acid in the manner specified is a condition
of the patient’s participation in pemetrexed treatment as described by the patent, and is necessary
in order to receive the benefit of such treatment. If the patient fails to carry out this step, he or she
would not receive the benefit of the patented method, i.e. a reduction of potentially life-threatening
toxicities caused by pemetrexed. The physician, based upon the patented method, directs the
manner and timing of the patient’s ingestion of folic acid—400 to 1000 µg of folic acid for at least
five days out of the seven days prior to and during pemetrexed administration—and the patient is

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required to do so to receive the full benefit of the treatment. The Court cannot base a finding of
non-infringement upon the mere possibility that some patients might not follow their physician’s
instructions and instead must look to the ANDA Products’ labeling to determine, if all the patented
steps are followed, whether it would infringe the Asserted Claims.
Lilly has shown, by a preponderance of the evidence that, in accordance with Defendants’
proposed labeling, the physician directs or controls the patient’s administration of folic acid such
that the performance of all the claimed steps, including the administration of folic acid, can be
attributed to a single person, i.e. the physician. The evidence showed that physicians specify both
the “manner and timing” in detail, including prescribing an exact dose of folic acid and directing
that it be ingested daily. Tr. 111–12. The Court finds that performance of all of the claimed steps
of the ‘209 patent are attributed to the physician and would therefore constitute direct infringement
under § 271(a); thus, the use the Defendants’ ANDA Products would constitute inducement of
infringement of the ‘209 patent by Defendants under § 271(b).
II.

CONCLUSION

Based upon the foregoing findings of fact and conclusions of law, the Court concludes that
Lilly has shown by a preponderance of the evidence that the Asserted Claims of the ‘209 patent
would be infringed by the Defendants’ ANDA Products based upon inducement of infringement
by a single actor, the physician administering pemetrexed disodium in accordance with the claimed
methods. Therefore, the Court finds that Defendants’ ANDA Products indirectly infringe the
Asserted Claims of the ‘209 patent, and finds in favor of Lilly and against Defendants. Final
judgment shall issue separate from this Entry.
SO ORDERED.
Date: 8/25/2015

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DISTRIBUTION:
Anne N. DePrez
BARNES & THORNBURG LLP
[e-mail]

Adam L. Perlman
WILLIAMS & CONNOLLY LLP
[e-mail]

Jan M. Carroll
BARNES & THORNBURG LLP
[e-mail]

Bruce Roger Genderson
WILLIAMS & CONNOLLY LLP
[e-mail]

Terri L. Bruksch
BARNES & THORNBURG LLP
[e-mail]

Christopher T Berg
WILLIAMS & CONNOLLY LLP
[e-mail]

James P. Leeds
ELI LILLY AND COMPANY
[e-mail]

David M. Krinsky
WILLIAMS & CONNOLLY, LLP
[e-mail]

Kandi Kilkelly Hidde
FROST BROWN TODD LLC
[e-mail]

Dov P. Grossman
WILLIAMS & CONNOLLY, LLP
[e-mail]

Natasha E. Daughtrey
GOODWIN PROCTER LLP
[e-mail]

Ellen E. Oberwetter
WILLIAMS & CONNOLLY, LLP
[e-mail]

Brian J. Prew
GOODWIN PROCTER, LLP
[e-mail]
Daryl L. Wiesen
GOODWIN PROCTER, LLP
[e-mail]
Elaine Herrmann Blais
GOODWIN PROCTER, LLP
[e-mail]
Emily L. Rapalino
GOODWIN PROCTER, LLP
[e-mail]
Michael B. Cottler
GOODWIN PROCTER, LLP
[e-mail]
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