A former Delaware judge has been appointed to determine whether Orexo AB violated a protective order from previous litigation in order to accuse generic drugmaker Actavis Elizabeth of infringing two patents for its opioid treatment drugs.
On Tuesday, U.S. District Judge Gregory M. Sleet of the District of Delaware said that retired Superior Court Judge Charles H. Toliver IV would act as special master in the case, tasked with addressing Actavis allegations that Orexo had used confidential information to build its case seeking to boot Actavis generic versions of Suboxone and Subutex from the market.
Actavis moved to dismiss the suit in April, arguing that Orexo s infringement allegations drew directly from confidential documents the company obtained during an earlier dispute over two patents for Orexo s Zubsolv drug, which is also used to combat opioid addiction.
In that case, Judge Sue L. Robinson determined that Actavis had infringed Orexo s so-called 996 patent but ruled a second patent, set to expire 13 years later, invalid as obvious. Actavis chose not to appeal the decision, and Orexo filed its current suit in February, asserting infringement of the 996 patent.
Actavis said the complaint was premised on confidential information about the chemical properties of its generics that could have only been obtained through discovery, which was restricted only to the Zubsolv litigation. And it faulted Orexo for waiting on the outcome of the previous case to raise its concerns about the Suboxone and Subutex generics.
Orexo should have laid its cards on the table when it first received Actavis confidential information, its attorneys said in a redacted briefing.
Instead, Orexo improperly sat on the information, remained silent about its intentions, and then without ever asking permission from Actavis or this court, misused Actavis confidential information by bringing this case only after the 996 patent had already been litigated.
Actavis said that it had already been selling its generics for years and that the timing of the suit was no accident, given the secret disclosures in the earlier litigation. It noted that 10 other manufactures selling similar products had not been sued in connection with their generics.
Orexo has rejected the allegations, saying they are based solely on layer arguments and self-serving speculation.
In its answering brief, Orexo said its allegations were derived from publicly available material, including expert analysis of Actavis generics and information printed on the drugs labels. Further testing of the tablets themselves revealed important details about the relationships between the generics ingredients, Orexo said.