By Kurt R. Karst –      

Congress has been silent on new legislation addressing drug patent settlement agreements (aka “reverse payment agreements” or “pay-for-delay agreements”) since the U.S. Supreme Court issued its June 2013 opinion in Federal Trade Commission v. Actavis, Inc., 570 U.S. ___ (2013).  As we previously reported, the Court declined to hold that reverse payment settlement agreements are presumptively unlawful, and that “Courts reviewing such agreements should proceed by applying the ‘rule of reason,’ rather than under a ‘quick look’ approach.”  Notwithstanding the Court’s holding on the appropriate test to apply to drug patent settlement agreements, however, the Court also held that the FTC should have been given the opportunity to prove its antitrust claims and that the exclusionary potential of a patent does not immunize a drug patent settlement agreement from antitrust attack.  (That case in now progressing as reported yesterday by Law360.)  The silence from Capitol Hill was broken earlier this week when Representative Bobby Rush (D-IL) introduced “new” legislation: H.R. 3709, the Protecting Consumer Access to Generic Drugs Act of 2013.

H.R. 3709, which has apparently been ready for introduction since July 2013 (according to the date stamp on the version obtained by the FDA Law Blog), is the same bill Rep. Rush introduced in February 2012: H.R. 3995, the Protecting Consumer Access to Generic Drugs Act of 2012.  In fact, other than a change from 2012 to 2013, H.R. 3709 appears to be identical to H.R. 3995.  The same thing happened in the U.S. Senate with that chamber’s drug patent settlement bills: S. 214, the Preserve Access to Affordable Generics Act, which was introduced in February 2013 (see our previous post here), and S. 504, the Fair And Immediate Release of Generic Drugs Act (“FAIR Generics Act”), which was introduced in March 2013 (see our previous post on an earlier version of the bill).

As we previously reported, the Protecting Consumer Access to Generic Drugs Act is different than the current versions of the Preserve Access to Affordable Generics Act and the FAIR Generics Act, although the House bill does harken back to a February 2009 version of the Preserve Access to Affordable Generics Act.  Specifically, the Protecting Consumer Access to Generic Drugs Act does not include the controversial presumption that an agreement, if challenged by the FTC, is anticompetitive and unlawful unless it can be demonstrated by clear and convincing evidence that the procompetitive benefits of the agreement outweigh the anticompetitive effects of the agreement.  Instead, the Protecting Consumer Access to Generic Drugs Act of 2013 simply says:

It shall be unlawful for any person to directly or indirectly be a party to any agreement resolving or settling a patent infringement claim in which – (1) an ANDA filer receives anything of value; and (2) the ANDA filer agrees not to research, develop, manufacture, market, or sell, for any period of time, the drug that is to be manufactured under the ANDA involved and is the subject of the patent infringement claim.

There are exceptions to this blanket rule.  H.R. 3709 would not prohibit agreements in which the value received by the ANDA sponsor includes no more than the right to market the drug product before the expiration of certain patents and non-patent marketing exclusivities.  A violation of the blanket rule (unless otherwise excepted) would be treated as an unfair and deceptive act or practice and an unfair method of competition in or affecting interstate commerce prohibited under the FTC Act.  The bill would also permit the FTC to promulgate regulations to further implement the exceptions included in the bill.

It’s been quite a month for Hyman, Phelps & McNamara, P.C. (“HP&M”)!  First, the American Bar Association named the FDA Law Blog to the 2013 ABA Journal Blawg 100 (see here).  Now there are three more honors to report! 

Earlier this week at the Food and Drug Law Institute’s (“FDLI”) Annual Holiday and Leadership Awards Reception, HP&M Director Jeffrey N. Gibbs was honored when the organization awarded him with the 2013 Distinguished Service and Leadership Award.  The award is given each year to as many as four individuals from various areas of the food and drug law community for their notable service and leadership.  Joining Mr. Gibbs in the 2013 award are Jane A. Axelrad, the Associate Director for Policy in FDA’s Center for Drug Evaluation and Research; Kay Holcombe, Vice President of Government Relations and Senior Health Policy Advisor at Genzyme; and Richard Kingham, a partner at Covington & Burling LLP.  (For more on the award recipients, see here).  Mr. Gibbs joins a distinguished list of past award recipients, including HP&M’s Paul M. Hyman (2003) and Stephen H. McNamara (2004).

Moving on . . . .  HP&M has once again been ranked as a “Tier 1” law firm in the area of “FDA Law” (both nationally and in Washington, D.C.) by the folks over at U.S. News & World Report, who  teamed up with Best Lawyers for the “America’s Best Law Firms 2014” rankings.  More than 11,000 law firms are ranked in 120 practice areas in 170 metropolitan areas and 8 states.  “[R]ankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations, peer review from leading attorneys in their field, and review of additional information provided by law firms as part of the formal submission process,” according to U.S. News.  The 2014 list of America’s Best Law Firms can be searched here, or viewed here (we’re noted on page 51).

Finally, HP&M has been busy on the publication front.  A new book published by Thomson Reuters, titled “Commercialisation of Health Care: Jurisdictional Comparisons,” delves into how health care products, including drugs, medical devices, biologics, and dietary supplements, are regulated across 21 major jurisdictions throughout the world.  The new book, for which HP&M’s Jeff Gibbs is one of the general editors, includes contributions from expert regulatory lawyers in each jurisdiction.  The chapter on United States regulation was co-authored by HP&M’s Jennifer D. Newberger, Alexander J. Varond, and Jeff Gibbs.

By Riëtte van Laack –

In addition to the many (more than 20,000) comments to FDA on the draft rules regarding Produce and Preventive Controls implementing the Food Safety Modernization Act (“FSMA”) (Docket Nos. FDA-2011-N-0920 and FDA-2011-N-0921), FDA has received a flurry of letters from Congress – see here, here, here, and here – expressing concerns about the unintended effect of FDA’s draft rules on agriculture and small businesses and reminding FDA of the intent of FSMA.

Although the letters highlight different aspects, the common thread appears to be a concern that, if implemented as proposed, the rules will result in unintended consequences that will be severely detrimental to agriculture.  The lawmakers’ concerns appear to relate primarily to FDA’s application of FSMA’s small business exemption and the proposed restrictions on the use of biological soil amendments and other conflicts between the proposed rules and current standards by USDA (e.g., the National Organic Program (“NOP”)).  According to the lawmakers, the proposed rules fail to properly define small businesses that would be exempt from certain requirements.  The proposed rules also fail to comply with FSMA’s mandate against establishing requirements that conflict with or duplicate the requirements of other laws and regulations, such as the NOP.

Some of the lawmakers suggest that FDA, rather than finalize the rules, revise the proposed rules and reissue them for public review and comment.  However, in light of the court-ordered deadlines for finalizing the rules (see our previous post here), a “do-over” may not be feasible. 

By Jennifer M. Thomas –

To the extent that Plaintiffs, or interested observers, hoped the District Court for the District of Columbia would seize an opportunity to take FDA to task for failing to prevent or stop drug shortages, they were disappointed by Judge Howell’s Thanksgiving ruling in Carik v. HHS, No. 12-00272 (D.D.C. Nov. 27, 2013). 

On the other hand, FDA may hug itself.  Judge Howell concurred completely with FDA’s argument that Plaintiffs lacked Article III standing because they failed to adequately allege any action by the government with a “causal connection” to their alleged injuries.  In doing so, he found expressly that two pharmaceutical manufacturers had caused the complained-of shortages, not FDA.  Nor did FDA have any ability, let alone a statutory or constitutional “duty to act,” to alleviate the drug shortages.  Finally, Judge Howell determined that the actions of the pharmaceutical companies in managing their drugs in shortage could not be fairly attributed to FDA, since the Agency was not alleged to have significantly encouraged those companies’ drug rationing schemes.

Judge Howell went further in favor of dismissal on Article III grounds even than FDA in its brief, finding that only one of the twenty-five Plaintiffs had adequately alleged injury in fact.  The “possibility that adverse effects may result from taking a diluted dose” of the drug in shortage could not constitute injury in fact where the Plaintiff’s had failed to quantify the increased risk of physical injury, and thus “demonstrate a ‘substantial probability’ that they will be injured.”

Coming on the heels of a major setback for FDA on the drug shortage front in the D.C. Circuit (Cook v. FDA, No. 12-5176 (Jul. 23, 2013)), as we discussed here, FDA may feel vindicated by Judge Howell’s recognition of the Agency’s serious limitations in managing drug shortages, and attribution of responsibility to pharmaceutical companies.   

By John R. Fleder –

On August 8, 2013, we reported on a brief filed by the Department of Justice in United States ex rel. Ge v. Takeda Pharmaceutical Company Limited.  The case involves the defendants’ alleged failure to timely report to FDA adverse drug events associated with certain drugs.

The government’s brief asserted that the court below had erred in relying on FDA’s Citizen Petition procedures as an “alternative administrative mechanism” that bars FCA actions.  The brief also argued that failure to report adverse events to FDA can theoretically form the basis for FCA liability.  The brief stated that pharmaceutical companies must report adverse events associated with their drugs to FDA.  The government indicated that FDA approval is relevant to whether the government can reimburse for drugs under some government programs.  The relator claimed that all of the claims for reimbursement submitted with regard to Takeda’s drugs were “false” because Takeda had not properly filed adverse events reports.  The government concluded that the circumstances where a failure to report an adverse event could form the basis for FCA liability are “rare.”  Indeed, the government stated that simply “alleging that a company failed to comply with FDA’s adverse event reporting requirements is insufficient to state an FCA claim.”  The government further argued that compliance with the FDCA’s adverse event reporting requirements “is not, in itself, a material precondition of payment under Medicare or Medicaid.”  In the government’s view, only when it is determined that the unreported adverse events “are so serious that the FDA would have withdrawn a drug’s approval for all indications had these events been properly reported” would the failure to report be material to the government’s payment decisions, and thus trigger a potential FCA action.

On December 6, 2013, the United States Court of Appeals for the First Circuit affirmed the lower court’s decision dismissing the case.  The Court of Appeals concluded that the Relator’s Complaint was legally deficient under Rule 9(b) of the Federal Rules of Civil Procedure because of the absence of evidence that the defendants’ alleged misconduct resulted in the submission of false claims or the making of false statements.   The Court also ruled that relator had not timely raised certain issues, such as the belated claim that the False Claims Act was violated under a FDC Act misbranding theory.

Unfortunately for those who were hoping for some clarity on the issue of the interplay between the False Claims Act and the FDC Act, the Court circumvented a ruling on that issue by affirming the dismissal on other grounds.  Indeed, the Court made reference to DOJ’s brief only in a short footnote that neither adopted no rejected the approach suggested by DOJ.  Thus, we will have to await another case to obtain clearer rulings from courts regarding the interplay between these two statutes.

By Kurt R. Karst –      

Our hopes that FDA might publish a proposed rule to implement at least some of the changes made to the Hatch-Waxman Amendments to the FDC Act by the Medicare Modernization Act (“MMA”), enacted on December 8, 2003, before the 10-year anniversary of the law were dashed when December 8th came and went without a peep out of the Agency.  We’re now at day 3,655 and counting.  And because this is Hatch-Waxman we’re talking about – where day calculations really count – we should be clear that the 3,655-day period was calculated from and including Monday, December 8, 2003, to and including Monday, December 9, 2013.  By comparison, FDA – and the U.S. Patent and Trademark Office for that matter – took significantly less time to implement the 1984 Hatch-Waxman Amendments:

• Proposed ANDA Regulations (Hatch-Waxman Title I): 1751 days (from and including Monday, September 24, 1984, to and including Monday, July 10, 1989)
• Final ANDA Regulations (Hatch-Waxman Title I): 1023 days (from and including Tuesday, July 11, 1989, to and including Tuesday, April 28, 1992)
• Final ANDA Regulations; Patent and Exclusivity Provisions (Hatch-Waxman Title I): 1911 days (from and including Tuesday, July 11, 1989, to and including Monday, October 3, 1994)
• Proposed Patent Term Restoration Regulations (Hatch-Waxman Title II): 656 days (from and including Monday, September 24, 1984, to and including Friday, July 11, 1986)
• Final Patent Term Restoration Regulations (Hatch-Waxman Title II): 605 days (from and including Saturday, July 12, 1986, to and including Monday, March 7, 1988)

C’est la vie . . . C’est la vie.  Perhaps 2014 – the 30th anniversary of the enactment of the Hatch-Waxman Amendments (on September 24, 1984) – will be the year when we see a proposed rule.  We understand that FDA is quite close to getting something out to the public.

Because we don’t yet have a proposed rule to talk about, we need something to fill the void.  So, we decided on the Paragraph IV notice provisions amended by the MMA.  Earlier this week we addressed “premature notice” (see our post here).  This post addresses the other side of the notice period: late notice and its consequences. 

Under FDC Act § 505(j)(2)(B)(ii), as added by the MMA:

(ii) TIMING OF NOTICE.—An applicant that makes a [Paragraph IV] certification . . . shall give notice as required under this subparagraph—

(I) if the certification is in the application, not later than 20 days after the date of the postmark on the notice with which the Secretary informs the applicant that the application has been filed; or

(II) if the certification is in an amendment or supplement to the application, at the time at which the applicant submits the amendment or supplement, regardless of whether the applicant has already given notice with respect to another such certification contained in the application or in an amendment or supplement to the application.

Prior to the MMA’s enactment, FDC Act § 505(j) provided specific instruction with respect to notice timing only as it concerned ANDA amendments.  Specifically, FDC Act § 505(j)(2)(B) (2002) stated:

(i) An applicant who makes a [Paragraph IV] certification described . . . shall include in the application a statement that the applicant will give the notice required by clause (ii) to –

(I) each owner of the patent which is the subject of the certification or the representative of such owner designated to receive such notice, and

(II) the holder of the approved application under subsection (b) for the drug which is claimed by the patent or a use of which is claimed by the patent or the representative of such holder designated to receive such notice.

(ii) The notice referred to in clause (i) shall state that an application, which contains data from bioavailability or bioequivalence studies, has been submitted under this subsection for the drug with respect to which the certification is made to obtain approval to engage in the commercial manufacture, use, or sale of such drug before the expiration of the patent referred to in the certification.  Such notice shall include a detailed statement of the factual and legal basis of the applicant's opinion that the patent is not valid or will not be infringed.

(iii) If an application is amended to include a [Paragraph IV] certification . . . , the notice required by clause (ii) shall be given when the amended application is submitted.

FDA’s regulation at 21 C.F.R. § 314.95(b), which implemented the statutory notice provision under the Hatch-Waxman Amendments for original ANDAs, states, in relevant part, that an ANDA sponsor must provide notice of its Paragraph IV certification “when it receives from FDA an acknowledgment letter stating that its [ANDA] is sufficiently complete to permit a substantive review.”  As FDA has previously stated, “[t]he term ‘when’ was subject to multiple interpretations by industry, resulting in ANDA applicants providing notice to NDA holders and patent owners at times ranging from immediately upon receipt of an acknowledgement letter to months after such receipt.”  FDA’s regulation at 21 C.F.R. § 314.95(d), which implemented the statutory notice provision under the Hatch-Waxman Amendments for amended ANDAs, states: “[i]f an abbreviated application is amended to include [a Paragraph IV] certification . . . , the applicant shall send the notice required by paragraph (a) of this section at the same time that the amendment to the abbreviated application is submitted to FDA.”

Pre-MMA, FDA and the courts addressed the question of timing of Paragraph IV notice in a couple of cases concerning amended ANDAs (both involving Purepac) for generic versions of NEURONTIN (gabapentin): Purepac Pharmaceutical Co. v. Thompson, 354 F.3d 877 (D.C. Cir. 2004), aff’g TorPharm, Inc. v. Thompson, 260 F.Supp.2d 69 (D.D.C. 2003).  (Further litigation involved a challenge to FDA’s patent-by-patent interpretation of the pre-MMA statute permitting multiple periods of 180-day exclusivity – see here).

In summary, Purepac amended its ANDA with a Paragraph IV certification in late May 2000, but waited until June 13, 2000 to send notice of the certification to the NDA owner/patent owner.  In contrast, TorPharm, another ANDA sponsor, simultaneously amended its ANDA and sent notice to the NDA sponsor/patent on June 13, 2000.  FDA received TorPharm’s amended ANDA on June 16th and deemed the Paragraph IV certification filed on that day.  FDA concluded that the penalty for Purepac’s failure to provide simultaneous notice should be postponement of the effective date of the certification.  Ultimately, FDA refused to nullify Purepac’s notice (as argued by TorPharm) and FDA awarded Purepac 180-day exclusivity because Purepac completed both tasks before TorPharm.  The U.S. District Court for the District of Columbia found this to be a reasonable exercise of FDA’s discretion, and the D.C. Circuit affirmed.

With respect to timely notice and original ANDAs, two Citizen Petitions were submitted to FDA post-MMA concerning pre-MMA 180-day exclusivity for generic versions of two drugs: (1) RISPERDAL (risperidone) Tablets, the subject of an IVAX Citizen Petition, FDA Docket No. 2004P-0520 (Nov. 19, 2004); and DUONEB (albuterol sulfate and ipratropium bromide) Inhalation Solution, the subject of a Mylan Citizen Petition, FDA Docket No. 2006P-0245 (June 12, 2006).  Both petitions contend that Congress effectively directed FDA to apply the same notice rule to original and amended ANDAs.  FDA did not substantively respond to either petition.  In the case of Risperidone Tablets, the patent at issue expired and 180-day exclusivity was granted with respect to a later-listed patent (see here).  In the case of generic DUONEB, FDA apparently resolved the notice issue and granted exclusivity contrary to what was requested in the petition (see here). 

Post-MMA, we’re not aware of an instance in which FDA has publicly resolved a notice dispute concerning an original ANDA pursuant to FDC Act § 505(j)(2)(B)(ii)(I).  But we’re going to make an educated guess here as to how FDA would handle the issue (and how it might be described in proposed regulations to implement to MMA).  Consider the following scenario and the underlying rule that a Paragraph IV certification is perfected when notice is timely sent within the statutory timeframe.

The Reference Listed Drug is listed in the Orange Book with information on a single patent and has been granted 5-year New Chemical Entity (“NCE”) exclusivity.  Thus, the date on which the first ANDA can be submitted to FDA containing a Paragraph IV certification – the so-called “NCE-1 date” – qualifying an ANDA sponsor as a “first applicant” eligible for 180-day exclusivity is known to all potential ANDA applicants.  ANDA Applicant Nos. 1 and 2 submit their applications on the NCE-1 date.  Both ANDAs are received on the same date and the applicants receive notice of that receipt on the same day.  ANDA Applicant No. 1 provides notice of its Paragraph IV challenge within 20 days of receiving FDA’s receipt notice.  ANDA Applicant No. 2 delays sending notice of its Paragraph IV challenge until 23 days after receiving FDA’s receipt notice.  What happens? 

We think FDA will propose that untimely notice postpones the effective date of the Paragraph IV certification (whether in an original ANDA or in the case of an amended ANDA).  That is, with respect to the scenario above, ANDA Applicant No. 1 would be a first applicant eligible for 180-day exclusivity because its ANDA was received as of the date of submission of the ANDA (i.e., the NCE-1 date).  ANDA Applicant No. 2, however, would not be a first applicant eligible for 180-day exclusivity because its ANDA was not received as of the date of submission of the ANDA.  That is, we think FDA would add on an additional 3 days to the initial ANDA submission date, such that the ANDA is considered received as of the NCE-1 date plus 3 days (to account for the untimely notice period).  Are we correct?  We’ll see when FDA finally proposes some MMA regulations implementing FDC Act § 505(j)(2)(B)(ii).

By Kurt R. Karst –      

A Complaint recently filed in the U.S. District Court for the District of Delaware by Otsuka Pharmaceutical Co., Ltd. (“Otsuka”) against Par Pharmaceutical, Inc. (“Par”) concerning notice of a Paragraph IV certification contained in an ANDA Par submitted to FDA for a generic version of SAMSCA (tolvaptan) Tablets raises the issue of so-called “premature notice.”  The issue is not a new one – particularly for Par.

FDA approved SAMSCA on May 19, 2009 under NDA No. 022275 and granted a period of 5-year New Chemical Entity (“NCE”) exclusivity.  Because patents are listed in the Orange Book for SAMSCA, that raises the possibility of submission of an ANDA containing a Paragraph IV certification beginning on the so-called NCE-1 date of May 19, 2013.  It also means that a timely filed patent infringement lawsuit within 45 days of the NDA holder/patent owner having received notice of a Paragraph IV challenge results in a 30-month litigation stay on ANDA approval that lasts until 7.5 years after the date of NDA approval (or until November 19, 2016 in the case of SAMSCA), unless an earlier court decision terminates the stay. 

Although it has been nearly 7 months since the NCE-1 date of May 19, 2013, FDA’s Paragraph IV Certifications List has not yet been updated to reflect receipt (i.e., filing) of an ANDA for generic SAMSCA containing a Paragraph IV certification.  But Otsuka recently filed a Complaint in the U.S. District Court for the District of Delaware in response to a Paragraph IV notice received by Par.  That means either FDA’s Paragraph IV Certifications List has not yet been updated to reflect receipt of an ANDA . . . . or that the list is currently correct and the notice sent by Par with respect to the company’s ANDA No. 206119 is not effective.  Not effective you ask?  Yes, ineffective beacuse it is premature.

Under FDC Act § 505(j)(2)(B)(ii), as added by the 2003 Medicare Modernization Act:

(ii) TIMING OF NOTICE.—An applicant that makes a [Paragraph IV] certification . . . shall give notice as required under this subparagraph—

(I) if the certification is in the application, not later than 20 days after the date of the postmark on the notice with which the Secretary informs the applicant that the application has been filed; or

(II) if the certification is in an amendment or supplement to the application, at the time at which the applicant submits the amendment or supplement, regardless of whether the applicant has already given notice with respect to another such certification contained in the application or in an amendment or supplement to the application.

According to Otsuka, which confirmed with FDA that as of November 14, 2013, Par’s ANDA No. 206119 had not been accepted for review:

Upon information and belief, as of October 10, 2013, Par did not have an ANDA with respect to Otsuka’s SAMSCA® (tolvaptan) that had been accepted for review by [FDA].  The acceptance of an ANDA by the FDA is a prerequisite that must be satisfied before Par can send Otsuka proper notification that an ANDA containing a “Paragraph IV certification” has been filed.  Such a notice letter, if it were valid, would start a time period in which Otsuka must sue for patent infringement in order to obtain a 30-month statutory period during which the FDA cannot approve Par’s ANDA.  Because, upon information and belief, Par’s ANDA had not yet been accepted by the FDA, Par could not send a valid notice letter to Otsuka, and therefore could not trigger Otsuka's statutory right to sue for infringement or commence the 30-month stay.

Shortly after confirming with FDA that Par’s notice letter was premature, Otsuka contacted Par and asked the company to withdraw the Paragraph IV notice.  Among other things, Otsuka cited a 2008 court decision – SB Pharmco Puerto Rico, Inc. v. Mutual Pharm. Co, Inc., 552 F. Supp. 2d 500 (E.D. Pa. 2008) (see here) – which held that a Paragraph IV notice letter sent prior to FDA’s receipt of an ANDA is premature and ineffective.  In that decision, the court also noted that premature certification, if accepted, could lead to manipulation of the Hatch-Waxman scheme by “accelerat[ing] the timing provisions and litigation process well beyond the framework that Congress intended.”  This point is reiterated by Otsuka in its Complaint: “By filing prematurely or notifying the NDA holder or patent owner prematurely, the first ANDA filer may also be able to manipulate the rules surrounding the 30-month stay to its advantage and reach the market sooner than would otherwise be permitted.”

Par declined Otsuka’s request to withdraw the notice (see here), saying that the “Paragraph IV Notice may be necessary to protect Par’s potential first-to-file status.”  Furthermore, according to Par, Otsuka’s reliance on SB Pharmco “is not persuasive” because the court in that case “improperly gave deference to the FDA’s interpretation of [FDC Act § 505(j)(2)(B)(ii)(II)].”  “No deference is owed to the FDA’s interpretation if the statutory language is clear and unambiguous, as is [FDC Act § 505(j)(2)(B)(ii)(II)],” writes Par.  (Of course, in the case of SAMSCA and Par's original ANDA, FDC Act § 505(j)(2)(B)(ii)(I), and not FDC Act § 505(j)(2)(B)(ii)(II), is the operative provision.)   

Interestingly, Par’s notice to Otsuka is not the first time the company has attempted to jump the gun by sending notice before FDA’s receipt of an ANDA as substantially complete.  According to one letter from FDA sent in August 2012, the Agency rebuffed Par for doing the same thing on another drug.  Indeed, we understand that the notice to Otsuka is not even the second time Par has followed an early notice strategy.  This may be a pattern of conduct followed by Par in more than 6 instances.  Will FDA finally more forcefully step in and take action to prevent future premature notices?  We may not know for sure, but the absence of future complaints alleging premature notice could be a sign that FDA had enough of the practice and took action to put an end to it. 

The Food and Drug Law Institute (“FDLI”) will hold is annual – and quite popular – Enforcement, Litigation and Compliance Conference from December 10-11, 2013 at The Westin Georgetown in Washington, DC.  You can register for the conference here.  A copy of the conference agenda is available here.

During the two days of advanced sessions, attendees will hear HHS OIG’s deputy inspector general for investigations discuss prescription drug diversion enforcement efforts, hear compliance directors from all FDA product Centers discuss center-specific developments, and hear how the federal government works across agencies to collaborate on enforcement actions.  Here’s a list of the star-studded cast of government presenters:

• Gary Cantrell, Deputy Inspector General for Investigations, Office of Inspector General, HHS
• Mary E. Riordan, Senior Counsel, Office of Counsel, Office of the Inspector General, HHS
• Beth P. Weinman, Associate Chief Counsel for Enforcement, Food & Drug Division, HHS Office of the General Counsel
• Jill Furman, Deputy Director, Consumer Protection Branch, DOJ
• Robert L. Hill, Executive Assistant, Office of Diversion Control, DEA, DOJ
• Ilisa Bernstein, Deputy Director, Office of Compliance, CDER, FDA 
• Jarilyn Dupont, Director of Regulatory Policy, Office of Policy, OC, FDA
• Annamarie Kempic, Deputy Chief Counsel for Litigation, Office of Chief Counsel, FDA   
• Mary A. Malarkey, Director, Office of Compliance and Biologics Quality, CBER, FDA 
• Daniel McChesney, Director, Office of Surveillance and Compliance, CVM, FDA   
• Michael W. Roosevelt, Deputy Director, Office of Compliance, CFSAN, FDA 
• John Roth, Director, Office of Criminal Investigation, FDA
• Steven D. Silverman, Director, Office of Compliance, CDRH, FDA 
• Ann L. Simoneau, Director, Office of Compliance and Enforcement, CTP, FDA    

In addition to these key panels, attendees will hear from the FDA Office of Chief Counsel during the Inaugural Eric M. Blumberg Memorial Lecture.  (Mr. Blumberg, the Deputy Chief Counsel for Litigation at FDA, died last March of complications from a stroke – see here.)  

Hyman, Phelps & McNamara, P.C.’s John R. Fleder will moderate a panel on Responding to FDA Enforcement Actions.  The panel, which includes David J. Bloch, Principal Legal Counsel, Medtronic, Inc., Mitchell S. Fuerst, Managing Partner, Fuerst Ittleman David & Joseph, PL, and Stephen Gardner, Director of Litigation, Center for Science in the Public Interest, will focus on a range of complex issues, including private enforcement actions through state consumer protection laws, the Lanham Act, False Claims Act, deferred prosecution agreements, and non-prosecution agreements.  The session will present both the plaintiff and defense side of enforcement actions.  Additionally, the panelists will review inspections and warning letters and what FDA enforcement trends may mean for industry members.

By Delia A. Stubbs & John A. Gilbert –

DEA didn’t waste time during its Thanksgiving break.  Monday, in just shy of three weeks of the close of its comment period on its proposed rule, DEA issued a final rule placing perampanel in Schedule III.  We previously reported on DEA’s delay in issuing a Notice of Proposed Rulemaking (“NPRM”) to schedule the drug and the impact on drug manufacturer, EISAI, here, here, and here. 

DEA’s quick turnaround is not surprising in light of EISAI’s recent suit where it requested that the Court of Appeals for the D.C. Circuit issue a writ of mandamus ordering DEA promptly to schedule perampanel.  Perampanel is the active pharmaceutical ingredient (“API”) in EISAI’s drug, FYCOMPA, that FDA approved last year.  FDA has taken the position that the exclusivity clock began to run upon the drug's approval, although EISAI cannot market the drug until it is scheduled by DEA (see our prior post here).  FDA sent its scientific and medical evaluation to DEA in January of 2013, but as of October, the agency had yet to take any discernable action on it.  While the Court declined to grant the writ, shortly after DEA promised to issue a NPRM by the end of the month, the Court warned that “petitioner may once again seek relief in this court should the Drug Enforcement Administration fail to adhere to its envisioned schedule.”  Fear of once again being dragged into federal court may have prompted the agency to move quickly.

The final order scheduling FYCOMPA will not be effective until January 2, 2014.  DEA declined to follow a commenter’s request that DEA make the regulation effective – and thus the drug available – immediately.  DEA reasoned that final orders are required by regulation to become final no less than 30 days after publication and “that the conditions of public health or safety do not necessitate . . . an earlier effective date.”  Id. at 72,014 (citing 21 C.F.R. § 1308.45).  It explained that there are medications currently available with the same indications as perampanel, yet different mechanisms of action, and that delaying effectiveness of the final rule by 30 days will “allow handlers to obtain the appropriate registration with the DEA and to comply with regulatory requirements for handling schedule III controlled substances.”  Id.  For manufacturer EISAI, who has already lost 13 months of exclusivity during DEA’s delay, January 2nd likely can’t come soon enough.   

By Dara Katcher Levy –

We recently became aware of a lawsuit filed against FDA in the Eastern District of New York over the importation of bulk drug product.  In this suit, which also names an individual FDA Compliance Officer, the importer argues that FDA’s actions in refusing a shipment of bulk acetaminophen are overreaching, arbitrary and capricious, unlawful and discriminatory.  The importer is requesting a temporary restraining order that would stay U.S. Customs and Border Patrol’s request for redelivery of the refused shipment, and a declaratory judgment that the acetaminophen that is the subject of the import is exempt from misbranding provisions of section 502(f)(1) of the Federal Food, Drug, and Cosmetic Act.

FDA apparently refused the shipment because of some unidentified policy against importing lawful product for future use or inventory, as well as a failure to document every customer that would be purchasing the finished goods (from the importer’s customer, not the importer).  According to the Complaint, the importer, was seeking to import bulk acetaminophen to distribute to its contract manufacturer customer.  The contract manufacturer provided an end-use letter that stated the acetaminophen would be further manufactured into over-the-counter drug products, and identified one of the brands that would be manufactured from the bulk product.  The bulk acetaminophen, as proposed for import, had been labeled with the statement, “Caution: For manufacturing, processing, or repacking” in accordance with 21 C.F.R. § 201.122.  In addition, the ultimate customer of the contract manufacturer also contacted the FDA prior to the refusal.

After over a month of correspondence, FDA refused the shipment through a formal FDA Notice of Refusal that stated, “DOCUMENTATION NEEDED TO REMOVE THE APPEARANCE OF VIOLATION, SUCH AS, APPROVED USE DOCUMENTATION.  NO APPLICATION, USE OR END-USER TRANSMITTED.  REQUIRED END-USE DOCUMENTATION NOT RECEIVED TO DATE.”  Separately, by email, the Compliance Officer stated that it appeared the active pharmaceutical ingredient would be for future or stock/inventory use and “[c]urrent guidance for bulk APIs does not permit importation for stock/inventory use.” 

OTC drug products are often manufactured by a single manufacturer for many private label distributors.  As long as the finished product is ultimately compliant, FDA’s refusal to permit the import of otherwise lawful bulk drug product simply because a customer for the finished product had not yet been identified at the time of import is difficult to understand, and does not appear to be consistent with the agency’s regulations on drugs intended to be further manufactured.  It would be interesting to see whether an end-use statement that simply stated that the product would be manufactured and labeled in accordance with the pending OTC monograph would have sufficed in securing the release of this shipment.

Next Wednesday, December 12th, the ABA Section of Litigation, Products Liability Committee is sponsoring a live audio program titled “Understanding criminal prosecution of food and supplement companies (and their corporate officers) under the Food Drug and Cosmetic Act: Best practices to avoid becoming the next Jensen Farms.”  The presenters are Jeffrey Steger, Assistant Director of the Consumer Protection Branch, U.S. Department of Justice, and Hyman, Phelps & McNamara, P.C.'s Ricardo Carvajal and Anne Walsh.  The program will be moderated by Sam Felker of Bass, Berry & Sims, and is scheduled from 12:00 – 1:00 p.m. EST.  Registration is available here.

By Allyson B. Mullen & Jeffrey N. Gibbs –

On November 25, 2013, CDRH issued the Final Guidance “Distribution of In Vitro Diagnostic Products Labeled for Research Use Only or Investigational Use Only: Frequently Asked Questions” (the “RUO Guidance”) (see our previous posts on the draft guidance here and here).  The draft guidance significantly limited the sale and distribution of “Research Use Only” (RUO) and “Investigational Use Only” (IUO) products.  76 Fed. Reg. 31615 (June 1, 2011).  As we discussed in our previous blog posts on the draft guidance, most of the restrictions set out in the policy were consistent with the current practices of many IVD companies, but in several key areas the agency’s proposals would have substantially curbed the sale of RUO and IUO labeled products.

Most significantly, in the draft guidance, FDA departed from the well-established practice of determining intended use based on the manufacturer’s conduct, by also considering how a customer uses a product.  FDA stated in the draft guidance that a manufacturer must stop sales of its RUO or IUO product to a customer once the manufacturer knows – “or has reason to know” – that the customer is using the product for a diagnostic use, even if the manufacturer makes no diagnostic claims or statements.  In Hyman, Phelps & McNamara, P.C.’s comments to the draft guidance, we recommended that this concept be removed from the final guidance (see here and here). 

In the draft guidance, FDA defended this approach by stating that cessation of sales was necessary since use of RUO and IUO products in clinical diagnostic tests “presented[ed] a serious potential risk to the public health.”  Draft Guidance at 11.  However, in a recent FDASIA Hearing before the House Energy and Commerce Committee’s Subcommittee on Health (the “Committee) Dr. Jeffery Shuren, Director of CDRH, did not defend this position.  USHR21 Energy and Commerce Committee, November 15, 2013, available here (last visited Nov. 17, 2013).  When asked by Congressman Michael C. Burgess, M.D., Vice Chair of the Committee, whether Dr. Shuren had any evidence of patient harm caused by use of RUO products, Dr. Shuren said that while he was aware of companies putting RUO products on the market and then promoting them for clinical diagnosis, there was no evidence of harm.  Id.

With no known harm to patients or the public health, and a questionable legal basis for equating known use with intended use, the agency clearly could not justify the change in policy proposed in the draft guidance.  (Indeed, one could make a stronger argument that heavy restrictions on RUO sales actually would have an adverse impact on public health).   Dr. Shuren testified that the agency received the message loud and clear that the “reason to know” standard needed to come out of the final guidance.  Issued just 8 days later, the final guidance did just that.

With this background, FDA significantly modified the guidance before issuing the final version.  Some of the key differences between the draft guidance the RUO Guidance are:

• The final guidance introduces the concept of a certification program as evidence that the manufacturer is ensuring its customer are using the RUO or IUO product in accordance with its intended purpose.  RUO Guidance at 11.  The concept of a certification program for RUO products was originally introduced in the early 1990s in a draft Compliance Policy Guide (CPG) document issued by FDA.  After many companies implemented such programs, FDA never finalized the CPG and had seemed to move away from this concept in recent years, including having excluded such a concept from the draft RUO guidance.  However, unlike the earlier drafts of the CPG, the final RUO Guidance gives little weight to certification programs.
• The final guidance does not include the concept of registration and listing for foreign manufacturers, which was previously included in the draft guidance.  Draft Guidance at 7.
• The final guidance does not expressly address whether RUO and IUO products are subject to the Quality System Regulation like the draft guidance did.  Id. at 9.  This could suggest that for mislabeled RUO and IUO products FDA will subject them to the requirements in the QSR. 
• As discussed above, the final guidance does not include the concept that if the manufacturer of an RUO or IUO “knows, or has reason to know” that the product is being used in clinical diagnosis that it must take action and cease selling to that customer.  Id. at 10-11.  On the other hand, it does say “a manufacturer who produces only products labeled RUO whose sales force makes routine calls to clinical laboratories that do not perform research or clinical studies may be viewed as demonstrating its intent that its products be used for clinical purposes.”  RUO Guidance at 9.  This sentence may cause some RUO manufacturers to think more carefully about their customer lists.
• The Guidance puts some limits on the support RUO manufacturers can provide laboratory customers.  The guidance says, “provision of certain types of specialized technical support (e.g., assistance in performing clinical validation) to clinical laboratories” would be in conflict with the product’s RUO or IUO labeling.  Id.  However, FDA clarifies in Footnote 10 that specialized technical support “is not referring . . . to generic maintenance support or software updates for an RUO or IUO IVD product.”

One other interesting change between the draft and final RUO Guidance relates to use of RUO and IUO products in pre-market submissions to FDA.  The draft guidance affirmatively stated that a manufacturer could obtain 510(k) clearance for an IVD which used RUO or IUO products as part of the submission.  Draft Guidance at 12.  This language is not in the final guidance.  The significance of that omission is unclear.  However, the timing of the release of this Guidance interestingly coincided with two other important IVD developments.  On November 22, FDA issued a highly publicized Warning Letter to 23andMe, a provider of direct-to-consumer FDA sequencing service.  Also, FDA recently cleared Illumina MiSeqDx Platform for high-throughput DNA sequencing.  One could infer that FDA is signaling through the RUO Guidance and its clearance and enforcement actions that it wants manufacturers of laboratory instrumentation (e.g., sequencers) and reagents, and providers of at least certain laboratory developed tests to obtain FDA pre-market clearance. 

Even with some of the key changes in the RUO Guidance compared to the draft guidance, it is clear that FDA expects commercially available RUO and IUO products to be an area of focus for FDA enforcement.  The RUO Guidance emphasizes that FDA will review the totality of the circumstances when it comes to assessing whether an IVD is properly labeled as RUO or IUO.  This approach is consistent with FDA’s traditional approach to enforcement, although we do not yet know which restrictions may trip up some RUO manufacturers.

• FDA views the RUO and IUO labeling statements as warnings and anything done by a manufacturer or distributor to undercut those warnings may be viewed as problematic. RUO Guidance at 8.
• FDA will be looking at the “objective intent” of the manufacturer to determine if the product is a true RUO or IUO.  Id. at 9. 
• The manufacturer should ensure that all presentations and talks are appropriately labeled with the RUO or IUO statement as applicable.  Id.
• The manufacturer should carefully review its current sales practices, including who the company solicits RUO and IUO business from.  Id. If an RUO/IUO manufacturer is soliciting business primarily from diagnostic laboratories, FDA would consider this off-label promotion.
• The manufacturer should ensure that it is not providing specialized support (e.g., beyond generic maintenance support or software updates) or LDT validation support for its RUO and IUO products.  Id.

During Dr. Shuren’s testimony before the Committee, he stated that the concern with RUO products being used in clinical diagnosis is that a determination (we should say an FDA determination) has not been made as to whether the RUO product is accurate or not.  Dr. Shuren went on to testify that in the instances where the agency has taken action against a manufacturer of an RUO product for clinical diagnostics promotion, it has been where there is an alternative test that has been cleared or approved for the same intended use.  This is helpful insight for industry into FDA’s thinking as it relates to the marketing of RUO and IUO products.

With the issuance of the RUO Guidance FDA’s policy is now articulated.  Of course, the RUO Guidance is just that: guidance.  It is not legally binding.  Still, we expect the agency to be keeping a close eye on RUO and IUO manufacturers and their marketing and sales practices.  The agency says it will take enforcement action based on the totality of the circumstances.  What that actually means remains to be seen.  As with most things with FDA, we will simply have to wait and see.  Thus, 21 years after FDA first proposed an RUO/IUO guidance document; the process has come to an end.  A final RUO/IUO guidance is now in effect.  Yet the original 1992 CPG proposal did spawn an issue that lives on: FDA has the power to regulate LDTs.  And that is an issue that will not be definitively resolved any time soon.

By Kurt R. Karst –      

Earlier this week, Representative Robert Hurt (R-VA) introduced new legislation – H.R. 3631, the Small Manufacturer Protection Act of 2013 – that, if enacted, would bring relief to some companies that are required to pay user fees under the Generic Drug User Fee Amendments of 2012 (“GDUFA”).  Although GDUFA user fees are significantly less than those fees paid by brand-name companies under the Prescription Drug User Fee Act (“PDUFA”), they increased substantially from Fiscal Year (“FY”) 2013 to FY 2014 with the disappearance of the ANDA backlog fee (see our previous post here) – particularly the Finished Dosage Form (“FDF”) and Active Pharmaceutical Ingredient (“API”) facility fees (domestic and foreign).  Some small generic drug manufacturers have reportedly found the fee amounts burdensome.  Indeed, in a statement provided to FDA Law Blog, Rep. Hurt commented:

I am proud to have introduced this legislation that addresses an important issue within Generic Drug User Fee Act (GDUFA) of 2012.  The way in which the FDA has implemented the GDUFA user fee has had an adverse effect on smaller generic drug manufacturers.  The expectation that small manufacturers pay the same fees as large firms is unrealistic, and it hampers economic growth and job creation in Virginia’s Fifth District, as well as across the country.  It is my hope that this important bill moves swiftly through the legislative process so that these manufacturers are afforded relief in a timely manner.

GDUFA, which was enacted on July 9, 2012 as Title III of the FDA Safety and Innovation Act (“FDASIA”), established several types of user fees: application fees (original ANDA and Prior Approval Suplement), a Drug Master File (“DMF”) fee, annual facility fees, and a one-time FY 2013 backlog fee.  The fees collected by FDA generate funding for the Agency to review generic drug submissions.  Unlike PDUFA, which includes several provisions under which a sponsor can request a waiver or refund of a user fee, GDUFA merely includes a provision for refund of a payment made in error (FDC Act § 744B(m)) and a refund of 75% of the application fee for certain ANDAs that are refused for receipt (FDC Act § 744B(a)(3)(D)). 

The absence in GDUFA of broad waiver and refund provisions – or provisions targeted to small businesses – is intentional.  As explained in GDUFA Negotiation Meeting Minutes:  

Industry and FDA agreed not to include fee waivers or exemptions to the extent possible, given the relatively low amount of expected individual fees, the return participants can expect for paying the fees through quicker review times and inspections, ease of administration that will allow FDA to hire additional science and inspection staff rather than a significant number of administrative staff to handle adjudications, as well as other benefits anticipated by the program.

Moreover, FDA addressed the effect of GDUFA user fees on small businesses during a March 29, 2012 hearing before the Senate Committee on Health, Education, Labor, and Pensions on the various UFAs (User Fee Acts).  There, FDA’s Janet Woodcock, M.D. commented that “[GDUFA] is expected to provide significant value to small companies and first-time entrants to the generic market.  In particular, these companies will benefit significantly from the certainty associated with performance review metrics that offer the potential to dramatically reduce the time needed to commercialize a generic drug, when compared to pre-GDUFA review times.”  (At a more recent hearing on FDASIA implementation – November 15, 2013 before the House Energy and Commerce Committee – FDA did not address concerns about GDUFA user fee burdens on small companies, based on a quick look at the preliminary hearing transcript.)

The penalties for failing to pay GDUFA user fees are stiff.  For example, failure to timely pay the application fee results in the application not being received by FDA until the fee is paid.  Failure to timely pay the DMF fee results in the DMF not being deemed available for reference, and an affected ANDA may not be received.  Finally, failure to timely pay a facility fee results in the several consequences, including that all FDF or API products manufactured at the facility and all FDFs containing APIs manufactured at the facility will be deemed misbranded.  Indeed, as we previously reported, FDA issued a Warning Letter to that effect earlier this year with respect to one non-paying facility. 

The Small Manufacturer Protection Act of 2013 would amend the statute to add new provisions allowing for waivers and refunds of GDUFA user fees.  Specifically, the bill would amend FDC Act § 744B(1)(b)(B) (“Fee Revenue Amounts”) to add the emphasized text below:

(B) FISCAL YEARS 2014 THROUGH 2017.—For each of the fiscal years 2014 through 2017, fees under paragraphs (2) through (4) of subsection (a), except as provided in subsection (c)(3), shall be established to generate a total estimated revenue amount under such subsection that is equal to $299,000,000, as adjusted pursuant to subsection (c).

Proposed FDC Act § 744B(c)(3), titled “Fee Waivers,” would apply with respect to fees authorized in FYs 2014-2017, and states:

(A) STANDARD.—The Secretary shall grant to a person that owns a generic drug facility a waiver from or a reduction of one or more fees assessed to that person under subsection (a) where the Secretary finds that the assessment of the fee would present a significant barrier to market entry because of limited resources available to such person or other circumstances.

(B) CONSIDERATIONS.—In determining whether to grant a waiver or reduction of a fee under subparagraph (A), the Secretary shall consider only the circumstances and assets of the person involved and any affiliate of the person.

In addition to these waiver provisions, the bill would require persons to timely request in writing a waiver or refund of a user fee: within 180 days after the fee is due. 

Although the bill is clearly targeted to relieve FDF and API manufacturers of user fee burdens, the references in the bill and in the proposed amended statute to fees assessed pursuant to “subsection (a)” appear to permit the possibility of a waiver or reduction of not only facility fees, but application and DMF fees paid by a facility owner as well. 

The introduction of H.R. 3631 comes just a few months after FDA denied a Citizen Petition (Docket No. FDA-2013-P-0204) submitted in February 2013 on behalf of Square Pharmaceuticals Ltd. (“Square”).  FDA interpreted one of Square’s requests – that FDA “issue, amend, or clarify the regulation and requirement for the payment of [FDF] facility fees under [GDUFA] for a generic finished product manufacturing facility of a foreign-based generic drug manufacturing company” – as essentially requesting that the Agency “change language in the GDUFA section of the enacted FDASIA legislation to require collection of manufacturing facility fees only one time, at the approval of the first ANDA manufactured at the subject facility (and to implement all regulatory and administrative changes necessary to make these changes).”  As such, FDA denied the petition, saying that “changes to statutory language can only be made through the federal legislative process,” and that “[t]o amend the statutory requirements, Congress must pass new legislation amending the FDF facility fee language, and the President must sign the legislation.”  Although H.R. 3631 does not do exactly what Square requested in its petition, it would certainly give FDA the authority to reduce user fee burdens on some companies.

By Douglas B. Farquhar – 

Well, that certainly didn’t take long.

FDA has clearly been eager to initiate its new, clarified powers over compounding pharmacies.  President Obama only signed the new act (the Drug Quality and Security Act) the day before Thanksgiving, and this morning we find that FDA has already issued three draft guidances on human drug compounding.  One restates prohibitions contained in earlier guidances from FDA.  Another tells pharmaceutical compounders how they can register as “outsourcing facilities,” the new “voluntary” category for certain compounding pharmacies.  The third tells outsourcing facilities how they should report the drugs they compound.  Links to the new guidances are included below.

Many of the provisions of the new Act, which was summarized in an earlier blog post, depend on issuance of regulations by FDA, and many of those regulations require input from an advisory committee that was disbanded years ago and hasn’t been reborn yet.  As a result, there had been some speculation that the impact of the new Act would be somewhat delayed.

Fear not: FDA is apparently very eager to provide a clear pathway for compounders to register as “outsourcing facilities,” which requires registration, payment of fees, opening of processes and documents to FDA inspections, listing drug products with FDA, compliance with cGMP, and reporting of adverse events, among other things.  So, although the Act became law only about a day ago, in terms of business days (since the government was closed Thanksgiving, Thanksgiving lendemain, and over the weekend), FDA today issued the draft guidances, which were clearly well into the preparatory phase prior to President Obama’s signature being placed on the legislation.  It is hardly surprising that FDA was so excited to move quickly.  Although FDA Commissioner Margaret Hamburg publicly indicated that the Act didn’t give FDA all the powers she wished she had, the Act does clear away confusion created by dueling court decisions as to status of the section of the Federal Food, Drug, and Cosmetic Act (FDCA) that it amended (Section 503A, found at 21 U.S.C. §353a).

Aside from the rapidity with which the guidances were issued, there is not much spectacular to report.  One of the guidances discusses procedures to register as an outsourcing facility under new section 503B of the FDCA, and the word on the street is that there are several compounding pharmacies that will be doing so shortly.  No fees will be charged until October 1, 2014.

The second guidance explains how quickly outsourcing facilities must report the drugs they have compounded in the prior six months.  Not surprisingly, this guidance says that “FDA encourages companies wishing to compound as outsourcing facilities to register with FDA immediately.”  The Guidance also states that if you register before June 2, 2014, you do not have to report this product information at the time of initial registration, as long as you do so within 2 months after registration.  FDA asks that the product information be submitted, for now, on an Excel spreadsheet attached to an email.  Microsoft should feel honored.

Finally, the third guidance provides clarity for compounding pharmacies that do not register with FDA as outsourcing facilities.  The draft guidance withdraws prior human drug compounding guidances, and restates that “FDA expects State boards of pharmacy to continue their oversight and regulation of the practice of pharmacy.”  The guidance states, however, that FDA intends to continue to cooperate with State authorities to “address pharmacy activities that may be violative” of the FDCA, including section 503A.  FDA expects to “employ a risk based enforcement approach,” and will give highest enforcement priority to compounded drugs and FDCA violations that pose the greatest health risk – which sounds like the approach that FDA has used since commencing its April 2013 Pharmacy Inspection Assignment.  The draft guidance underscores FDA’s position that a drug may not be legally compounded unless the facility is an “outsourcing facility” or the drug is compounded either for a specific patient, or in anticipation of a prescription for a specific patient based on historical ordering patterns.  The draft guidance also reiterates FDA’s historic  and controversial position that compounded drugs are new drugs (footnote 7) that would require approval if they aren’t compounded in strict compliance with the FDCA.  Finally, the draft guidance, which is explicitly not binding, also tells compounders that compounding must be performed in compliance with applicable chapters of the U.S. Pharmacopeia, which will doubtless perpetuate controversy: Section 503A of the FDCA itself requires that the ingredients used in compounding comply with USP, but does not require that the compounding process comply with USP.

FDA also issued pre-publication versions of two notices that will permit individuals to “nominate” drugs and bulk substances for addition to the “Do Not Compound” or the “Okay to Compound” lists called for in the statutory provisions governing compounding.  Yes, it is odd that these are “pre-publication” versions (they won’t be published until the December 4, 2013 Federal Register) and yet we have access to them now.  The “Do Not Compound” notice can be found here.  The notice establishing procedures for the “Okay to Compound” or “Positive” list (aside from those already authorized by statute) can be found here.

By Kurt R. Karst –      

The number of citizen petitions pending at FDA concerning Hatch-Waxman exclusivity continues to pile up.  As we previously reported (here and here), FDA has already been asked on three separate occasions in 2013 to recognize 5-year New Chemical Entity (“NCE”) exclusivity for a fixed-dose combination drug product containing both a never-before-approved active moiety and a previously approved active moiety: (1) NATAZIA (estradiol valerate and estradiol valerate/dienogest) Tablets (Docket No. FDA-2013-P-0471); (2) STRIBILD (elvitegravir, cobicistat, emtricitabine, tenofovir disoproxil fumarate) Tablets (Docket No. FDA-2013-P-0058); and (3) PREPOPIK (sodium picosulfate, magnesium oxide and citric acid) for Oral Solution (Docket No. FDA-2013-P-0119).  Later on in the year, Eisai Inc. (“Eisai”) petitioned FDA – Docket No. FDA-2013-P-0884 – arguing that the Agency erroneously triggered 5-year NCE exclusivity for BELVIQ (lorcaserin HCl) Tablets and FYCOMPA (perampanel) Tablets before the drugs were scheduled by the Drug Enforcement Administration (“DEA”) under the Controlled Substances Act (“CSA”), and thus, before commercial marketing could occur (see our previous post here).  Now come two more petitions on Hatch-Waxman exclusivity – one petition (Docket No. FDA-2013-P-1397) from UCB, Inc. (“UCB”) concerning 5-year NCE exclusivity for VIMPAT (lacosamide), and another petition (Docket No. FDA-2013-P-1376) from Covis Pharma S.à.r.l. (“Covis”) concerning 3-year new clinical investigation exclusivity for LANOXIN (digoxin) Tablets.  A denial of any one or more of these six petitions could very well end up in court with a potentially landscape-changing result.  Below is a run-down of the two latest citizen petitions.

VIMPAT (lacosamide) – Docket No. FDA-2013-P-1397

Similar to Eisai, UCB argues in its petition that FDA erroneously started the clock running on NCE exclusivity for lacosamide before scheduling of the drug under the CSA was completed by the DEA, thereby paving the way for UCB to market the product.  According to UCB, 233 days of exclusivity was lost, because lacosamide was not scheduled until May 21, 2009 when the DEA issued a final rule placing the drug into Schedule V,  “and the Department of Justice’s letter to each House of the Congress and the Comptroller General, transmitting the final rule scheduling lacosarnide, was received on June 9, 2009.” 

FDA has approved three NDAs for UCB’s lacosamide: NDA No. 022253 (tablets; approved on October 28, 2008), NDA No. 022254 (intravenous solution; approved on October 28, 2008), and NDA No. 022255 (oral solution; aproved on April 20, 2010).  In addition to the same two patents listed in the Orange Book for all three dosage form NDAs, the Orange Book also lists a period of NCE exclusivity that expired on October 28, 2013.  According to FDA’s Paragraph IV Certifications List, the Agency received ANDAs containing Paragraph IV certifications for generic versions of VIMPAT Oral Solution and VIMPAT Tablets on Monday, October 29, 2012 (the so-called NCE-1 date).  In fact, UCB says in the petition that the company received 19 Paragraph IV certification notices from 16 different companies!  (Possibly a new Hatch-Waxman record.)

Although UCB adopts the rational proffered by Eisai in its petition, UCB’s requested action differs somewhat from that of Eisai, likely because of the expired status of NCE exclusivity for the drug.  In addition to requesting that FDA “determine that the NCE exclusivity for lacosamide began on June 9, 2009, and thus will end on June 9, 2014,” UCB requests that FDA “confirm that the Agency will stay approval of [pending ANDAs], and any additional ANDA that meets the criteria under [FDC Act § 505(j)(5)(B)(iii)], absent another specified event under [FDC Act § 505(j)(5)(B)(iii)], until December 7, 2016.”  That is, UCB requests that the 30-month litigation stay on ANDA approval be extended from April 28, 2016, which is 7.5 years after NCE NDA approval, until December 7, 2016, which is 7.5 years after NCE NDA approval plus 223 days (or simply 7.5 years after UCB argues NCE exclusivity began). 

Curiously, UCB does not argue that each of the Paragraph IV ANDAs submitted to FDA on October 29, 2012 should be rejected as premature.  After all, if the NCE exclusivity began on June 9, 2009 as UCB argues, then the NCE-1 date for Paragraph IV ANDA submissions would have been June 9, 2013.  In that case, the ANDAs submitted in October 2012 were premature and should have been rejected by FDA. 

LANOXIN (digoxin) Tablets – Docket No. FDA-2013-P-1376

In what Covis says is a case of first impression, the company argues in its petition that FDA erroneously determined that periods of 3-year new clinical investigation that were granted with respect to two strengths of LANOXIN (digoxin) Tablets – 0.0625 mg and 0.1875 mg – have expired.  FDA approved six strengths of LANOXIN under NDA No. 020405 on September 30, 1997: 0.125 mg, 0.250 mg, 0.375 mg, 0.500 mg, 0.0625 mg, and 0.1875 mg.  Only two strengths have been marketed since NDA approval: 0.125 mg and 0.250 mg.  According to the 2000 edition of the Orange Book, the period of 3-year exclusivity for each strength (coded as “I-194” and defined in an Orange Book addendum as “CONGESTIVE HEART FAILURE”) expired on September 30, 2000. 

Although Covis does not disagree with FDA’s decision to aware 3-year exclusivity for all six strengths, the company contends that the periods of exclusivity for the 0.0625 mg and 0.1875 mg strengths did not begin to run until October 17, 2013 when FDA approved a Prior Approval Supplement (“PAS”) for them:

FDA’s complete administrative record for NDA 20-405 shows that the Agency only fully approved two of the six dosage strengths in that NDA.  This fact is confirmed by the Agency’s requirement that Covis submit a [PAS], CMC dissolution data for the new strengths (0 .0625 mg and 0.1875 mg), and draft labeling for the new strengths, and that FDA conduct a prior approval inspection.  The FDA inspector also directed Covis to be in compliance with all blend uniformity testing requirements. . . .  In the present case, the awarded exclusivity did not begin running for the four never-marketed strengths.  These four strengths could not have been fully approved in 1997 because FDA would not permit Covis to market the two new strengths before the Agency reviewed and approved new data and information.  Covis has only now submitted a PAS with necessary labeling – an approval requirement for an NDA or an [ANDA].  Furthermore, Covis has only now submitted contemporary CMC dissolution data, another pre-approval requirement.  These elements of approval, coupled with the prior approval inspection of Covis’ contract manufacturer and FDA’s direction that Covis comply with all appropriate blend uniformity testing requirements, confirm that this data and information are critical pre-approval and not post-approval requirements.  This conclusion is confirmed by the Agency’s administrative record for this NDA, particularly FDA’s 1997 approval letter and the 2012-2013 communications between FDA and Covis regarding the new strengths.

Although the petition does not specifically concern the two remaining never-before marketed strengths – 0.375 mg and 0.500 mg – Covis would presumably argue that a similar argument would apply to them if they are subsequently approved in a PAS.  

Accordingly, Covis requests that FDA:

(1) Confirm that the Agency did not fully approve the 0.0625 mg and 0.1875 mg tablets on September 30, 1997 in NDA 20-405 because of: (a) the language in the administrative record; (b) the recently-required submission of draft labeling and CMC dissolution data for the two new dosage strengths; (c) the recently-required submission of a PAS; (d) the recent prior approval inspection; and (e) the FDA inspector’s direction that Covis be in full compliance with all blend uniformity testing requirements;

(2) Confirm that three-year exclusivity was awarded but never began running for these two dosage strengths that have never been marketed under NDA 20-405, despite their listing in FDA’s Orange Book; and

(3) Confirm that Covis is therefore entitled to a period of three-year marketing exclusivity for the 0.0625 mg and 0.1875 mg dosage strength products that began running upon PAS approval.

In a separate citizen petition – Docket No. FDA-2013-P-1377 – Covis requests that FDA require ANDA sponsors seeking approval of generic LANOXIN Tablets, 0.0625 mg and 0.1875 mg, to meet certain requirements.