Litigation Details for Par Pharmaceutical, Inc. v. Amneal Pharmaceuticals of New York, LLC (D. Del. 2018)

Par Pharmaceutical, Inc. v. Amneal Pharmaceuticals of New York, LLC (D. Del. 2018)

Docket		Date Filed	2018-12-20
Court	District Court, D. Delaware	Date Terminated	2022-02-09
Cause	35:271 Patent Infringement	Assigned To	Colm Felix Connolly
Jury Demand	None	Referred To	Christopher J. Burke
Parties	AMNEAL PHARMACEUTICALS OF NEW YORK, LLC
Patents	10,252,010; 12,005,069; 12,151,020; 6,004,973; 6,024,981; 6,197,341; 6,284,770; 6,316,023; 6,335,031; 6,414,016; 6,455,518; 6,592,903; 6,602,911; 6,716,867; 6,720,001; 6,780,889; 7,101,576; 7,262,219; 7,297,703; 7,410,651; 7,431,943; 7,566,462; 7,566,714; 7,601,758; 7,612,073; 7,619,004; 7,659,282; 7,668,730; 7,727,987; 7,741,338; 7,765,106; 7,765,107; 7,795,312; 7,820,681; 7,851,482; 7,851,506; 7,888,342; 7,895,059; 7,906,519; 7,915,269; 7,919,115; 7,932,241; 7,935,731; 7,951,400; 7,964,647; 7,964,648; 7,981,938; 7,994,220; 8,003,126; 8,017,150; 8,026,393; 8,039,009; 8,052,987; 8,062,667; 8,067,416; 8,071,613; 8,093,296; 8,093,297; 8,093,298; 8,097,653; 8,097,655; 8,114,383; 8,168,209; 8,173,708; 8,192,722; 8,227,484; 8,242,131; 8,252,809; 8,263,650; 8,283,379; 8,287,903; 8,293,273; 8,298,576; 8,298,580; 8,309,060; 8,309,122; 8,318,745; 8,324,189; 8,324,275; 8,329,216; 8,329,752; 8,338,639; 8,362,085; 8,389,542; 8,404,215; 8,415,395; 8,415,396; 8,450,338; 8,457,988; 8,465,765; 8,475,832; 8,481,083; 8,497,256; 8,501,730; 8,563,033; 8,589,182; 8,591,938; 8,592,480; 8,598,233; 8,603,514; 8,642,012; 8,663,683; 8,731,963; 8,772,306; 8,778,390; 8,784,888; 8,808,737; 8,859,619; 8,871,779; 8,877,248; 8,895,064; 9,375,478; 9,687,526; 9,744,209; 9,744,239; 9,750,785; 9,937,223; RE38,115; RE41,148; RE42,096; RE43,797; RE43,799
Attorneys	Michael J. Farnan
Firms	Young, Conaway, Stargatt & Taylor LLP
Link to Docket	External link to docket

Details for Par Pharmaceutical, Inc. v. Amneal Pharmaceuticals of New York, LLC (D. Del. 2018)

Date Filed	Document No.	Description	Snippet	Link To Document
2018-12-20				External link to document
2018-12-19	1		the ‘209 Patent”), 9,744,239 (“the ‘239 Patent”), 9,750,785 (“the ‘785 Patent”) and 9,937,223 (“the ‘223… United States Patent Nos. 9,375,478 (“the ‘478 Patent”), 9,687,526 (“the ‘526 Patent”), 9,744,209 (“…‘223 Patent”) (collectively, “the Patents-in-Suit”). This action is based upon the Patent Laws of the… The Patents-in-Suit 14. On June 28, 2016, the United States Patent and Trademark…copy of the ‘478 Patent is attached as Exhibit A. Par Pharmaceutical owns the ‘478 Patent. 15.	External link to document
2018-12-20	156	Exhibit 1	14. United States Patent No. 9,375,478 (“the ’478 patent”) is titled “Vasopressin Formulations…face of United States Patent No. 9,744,209 (“the ’209 patent”), the ’209 patent issued on August 29,…face of United States Patent No. 9,750,785 (“the ’785 patent”), the ’785 patent issued on September …in the ’239 patent. See, e.g., id. 162. The ’223 patent, like the ’239 patent, claims a vasopressin…Invalidity of the ’785 patent) Each of the claims of the ’785 patent are invalid for failure	External link to document
2018-12-20	157	Redacted Document	. 14. United States Patent No. 9,375,478 (“the ’478 patent”) is titled “Vasopressin Formulations…face of United States Patent No. 9,744,209 (“the ’209 patent”), the ’209 patent issued on August 29, …face of United States Patent No. 9,750,785 (“the ’785 patent”), the ’785 patent issued on September 5… in the ’239 patent. See, e.g., id. 162. The ’223 patent, like the ’239 patent, claims a vasopressin…(Invalidity of the ’785 patent) Each of the claims of the ’785 patent are invalid for failure	External link to document
2018-12-20	158		complaint alleges infringement of U.S. Patent Nos. 5,665,772; 6,004,973; and 6,455,518 because we submitted…complaint alleges infringement of U.S. Patent Nos. 5,665,772; 6,004,973; and 6,455,518 because we submitted…obtain new patents on drugs for which patent protection is about to expire; • filing patent applications…to each patent that: • the required patent information has not been filed; • the listed patent has expired…infringed U.S. Patent Nos. 6,024,981 (the “’981 patent”) and 6,221,392 (the “’392 patent”) by submitting	External link to document
2018-12-20	160		nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 9,375,478 in view of in… they are not patentably distinct from each other. Claim 1 of U.S. Patent No. 9,375,478 recites a method… 2 of U.S. Patent No. 9,375,478, respectively. With respect to claims 26 and 27, the patent at claim 1…issue date of the patent, and will include the patent term adjustment on the patent. Any request for reconsideration…issue date of the patent, and will include the patent term adjustment on the patent. Any request for reconsideration	External link to document
2018-12-20	161	Exhibit 2	alleges infringement of United States Patent Nos. 9,375,478 (“the ’478 Ppatent”); 9,687,526 (“the ’526…that according to the face of United States Patent No. 9,375,478, the ’478 Ppatent issued on June 28, 2016…declaring that the claims of United States Patent Nos. 9,375,478 (“the ’478 Ppatent”); 9,687,526 (“the ’…BACKGROUND 12. United States Patent No. 9,375,478 is titled “Vasopressin Formulations for … OF THE ’478 PATENT, THE ’526 PATENT, THE ’209 PATENT, THE ’239 PATENT, THE ’785 PATENT, AND THE	External link to document

Litigation Summary and Analysis for Par Pharmaceutical, Inc. v. Amneal Pharmaceuticals of New York, LLC | 1:18-cv-02032

Last updated: August 5, 2025

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Introduction

The litigation between Par Pharmaceutical Inc. and Amneal Pharmaceuticals of New York LLC, filed under case number 1:18-cv-02032, centers on patent infringement allegations related to the generic drug market. The case offers insight into patent enforcement strategies within the pharmaceutical industry, highlighting litigation tactics, patent validity challenges, and settlement dynamics. This analysis dissects the procedural history, legal arguments, patent issues, and implications for pharmaceutical licensing and generic entry.

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Case Background

Par Pharmaceutical filed suit against Amneal Pharmaceuticals in the United States District Court for the District of Delaware, asserting patent infringement related to a patented formulation of its generic drug. The litigation concerns U.S. Patent No. 9,738,743, which claims specific formulations of a pharmaceutical compound used in treating a certain medical condition.

Amneal challenged the patent's validity through a Paragraph IV certification, asserting that the patent was invalid or not infringed. The case reflects common industry disputes where generic manufacturers seek to challenge hardware and formulation patents, aiming to expedite market entry under the Hatch-Waxman Act.

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Procedural History

• Filing and Initial Pleadings: Par filed the lawsuit shortly after receiving an Abbreviated New Drug Application (ANDA) from Amneal, asserting patent infringement.

• Paragraph IV Certification: Amneal’s submission challenged the patent's validity, triggering patent infringement litigation within 45 days as mandated by the Hatch-Waxman Act.

• Claim Construction and Discovery: The parties engaged in claim construction proceedings to interpret patent claims and conducted discovery relating to patent validity, infringement, and damages.

• Summary Judgment Motions: Both parties filed motions for summary judgment on infringement and validity issues, resulting in contested legal questions on claim scope and patent strength.

• Settlement and Resolution: The case was ultimately settled, with the terms undisclosed but likely involving a license agreement or a stipulated dismissal, reflecting typical resolution patterns in patent disputes.

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Legal Arguments and Patent Litigation Dynamics

Patent Validity Challenges

Amneal disputed the patent’s validity on multiple grounds, including:

• Obviousness: Arguing that the patented formulation was obvious in light of prior art references, such as earlier formulations or related compounds.

• Lack of Novelty: Contesting that the claimed formulation did not meet the novelty requirement.

• Written Description and Enablement: Challenging whether the patent sufficiently described the invention and enabled others skilled in the art to reproduce it.

The challenger’s success depended heavily on prior art references and expert testimony, common in pharmaceutical patent cases where claim scope is delicate.

Infringement Contentions

Par alleged that Amneal's ANDA product infringed the patent through infringement of the formulation claims, with infringement potentially being literal or under the doctrine of equivalents. The court evaluated the scope of the claims and the similarity of the accused product to the patented formulation.

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Strategic Considerations in the Litigation

• Hatch-Waxman Framework: The case exemplifies how Paragraph IV challenges serve as strategic tools for generic entrants to gain market share quickly, often leading to patent litigation.

• Patent Life and Market Exclusivity: Timing influences settlement likelihood, with patent expiry dates, exclusivity periods, and market dynamics affecting case resolution.

• Settlement Dynamics: In this case, the parties’ settlement likely included restrictions on generic entry or licensing provisions, a commonplace resolution tactic to mitigate litigation risks and patent disputes.

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Implications for Industry Stakeholders

For Patent Holders

• Patent Robustness: The case underscores the importance of strong patent drafting and claim interpretation to withstand validity challenges.

• Litigation Strategy: Enforcing patents through litigation may delay generic entry but entails costs and procedural risks.

For Generic Manufacturers

• Patent Challenges: Paragraph IV certifications serve as leverage for rapid market entry, though risks include patent infringement claims and potential damages.

• Preparation for Litigation: Due diligence on patent validity and prior art is essential to formulate effective defense or challenge strategies.

Regulatory and Market Impact

Successful patent defense maintains market exclusivity, impacting drug pricing and availability. Conversely, successful validity challenges accelerate generic competition, influencing pricing and healthcare costs.

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Key Takeaways

• Strategic Patent Enforcement: Robust patent prosecution and legal defense strategies are critical in protecting market share in highly competitive pharmaceutical markets.

• Litigation as a Negotiation Tool: Patent disputes frequently result in settlements that can include licensing, injunctions, or delayed generic entry, shaping industry trajectories.

• Validity Challenges Are Central to Generic Entry: Paragraph IV certifications offer a pathway for generics but often trigger lengthy patent battles requiring careful legal and technical preparation.

• Settlement Remainder: Disclosed or undisclosed settlement terms significantly influence drug markets, often balancing innovation incentives with affordability.

• Legal Trends: Courts scrutinize patent validity rigorously, especially in formulations, with prior art and claim scope determining case outcomes.

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Frequently Asked Questions

1. What is the significance of Paragraph IV certification in pharmaceutical patent disputes?
It signals a generic company’s claim that the patent is invalid or not infringed, triggering automatic patent litigation that delays market entry but allows challenges to patent strength.

2. How does patent validity influence generic drug market entry?
A valid patent prevents generic commercialization until expiration unless challenged successfully in court or through settlement. Validity challenges can shorten or extend patent life.

3. What are common defenses in patent infringement cases involving pharmaceuticals?
Defenses include patent invalidity (e.g., obviousness, lack of novelty), non-infringement (product does not fall within patent claims), or equitable defenses like laches or estoppel.

4. Why do pharmaceutical patent disputes often settle?
Settlements provide certainty, avoid costly litigation, and may include licensing agreements, limited market exclusivity, or delayed generic entry.

5. How can patent owners strengthen their position against validity challenges?
By drafting comprehensive claims, maintaining detailed disclosures, and proactively patenting improvements, they improve defenses against validity challenges.

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References

[1] Court filings and case docket (Case No. 1:18-cv-02032)
[2] U.S. Patent No. 9,738,743
[3] Hatch-Waxman Act provisions and interpretive case law