                            UNITED STATES DISTRICT COURT
                            FOR THE DISTRICT OF COLUMBIA

SANOFI-AVENTIS et al.,                        :
                                              :
                       Plaintiffs,            :       Civil Action No.:       09-1495 (RMU)
                                              :
                       v.                     :       Re Document No.:        5
                                              :
FOOD AND DRUG                                 :
ADMINISTRATION et al.,                        :
                                              :
                       Defendants.            :

                                     MEMORANDUM OPINION

        DENYING THE PLAINTIFFS’ MOTION FOR A TEMPORARY RESTRAINING ORDER
                            AND PRELIMINARY INJUNCTION


                                      I.   INTRODUCTION

       This case is before the court on the plaintiffs’ motion for a temporary restraining order

(“TRO”) and preliminary injunction. Plaintiff Debiopharm S.A. (“Debiopharm”) is a Swiss

company that holds the patent for the anti-cancer drug oxaliplatin. Plaintiff Sanofi-Aventis is the

pioneer manufacturer of the drug and plaintiff Sanofi-Aventis U.S. LLC (collectively “Sanofi-

Aventis”) holds the exclusive license for the drug in the United States. Sanofi-Aventis markets

and sells oxaliplatin under the brand name Eloxatin®. The plaintiffs ask the court to order the

Food and Drug Administration (“FDA”) to rescind approval it has given to third-party drug

manufacturers to manufacture and market generic versions of oxaliplatin. Because the plaintiffs

have failed to demonstrate that they are substantially likely to succeed on the merits of their case,

the court denies their request for a TRO and preliminary injunction.
                    II.   FACTUAL & PROCEDURAL BACKGROUND

                                  A.    The Hatch-Waxman Act

       The relevant portions of the Hatch-Waxman Act, 21 U.S.C. § 355 (“the Hatch-Waxman

Act”) amended the Food, Drug and Cosmetic Act, 21 U.S.C. § 351 et seq., and dictate the

process by which generic drugs are approved by the FDA and marketed by the drug companies.

Among other things, the Hatch-Waxman Act requires a drug manufacturer seeking approval to

produce a generic version of a drug to certify that the patent for the corresponding brand-named

drug “is invalid or will not be infringed by the manufacture, use or sale of the new drug for which

the application is submitted.” 21 U.S.C. § 355(b)(2)(A)(iv), (j)(2)(A)(vii)(IV). The patent holder

has forty-five days after receiving notification of the certification to bring a patent infringement

action against the drug manufacturer that filed the certification. 21 U.S.C. § 355(c)(3)(C),

(j)(5)(B)(iii). Once such an action is filed, the FDA must withhold approval of the drug

manufacturer’s application to produce a generic drug (“generic application”) for a thirty-month

period (“thirty-month stay”). Id. The thirty-month stay may be shortened, however, if “the

district court [in which the patent infringement action is brought] decides that the patent is

invalid or not infringed,” 21 U.S.C. § 355(c)(3)(C)(i), at which point the FDA’s approval shall be

effective the “date on which the court enters judgment,” 21 U.S.C. § 355(c)(3)(C)(i)(I) (“the

entry of judgment provision”).




                                                  2
                       B.    The New Jersey Suit and Subsequent FDA Action1

          The plaintiffs in this action are the patent holder, manufacturer and licensee of Eloxatin,

the name brand for oxaliplatin. Compl. ¶ 2. After a number of drug manufacturers seeking to

produce generic versions of oxaliplatin filed the required patent certification, the plaintiffs

brought a patent infringement suit against them in the United States District Court for the District

of New Jersey (“the New Jersey suit”).2 Pls.’ Mot. at 7. On June 18, 2009, the New Jersey court

ruled that the plaintiffs’ patent had not been infringed and, on June 30, 2009, that court entered

judgment. Id. The plaintiffs filed an emergency motion to stay the district court’s judgment

pending appeal with the Federal Circuit, which the court granted on July 1, 2009. Id., Ex. C. On

July 10, 2009 the Federal Circuit extended the stay to include the entire period up to the

disposition of the appeal. Id., Ex. D. The Federal Circuit has yet to rule on the merits of the

appeal.

          On August 7, 2009, the FDA approved the application of Teva Parenteral Medicines, Inc.

(“Teva”) to produce a generic version of oxaliplatin. Id. at 1. On August 10, 2009, the plaintiffs

filed a complaint with this court, seeking a TRO and preliminary injunction that would require




1
          As explained below, the court held an emergency hearing on the plaintiffs’ motions. The court
          denied the motions from the bench, noting that this memorandum opinion would follow. Hr’g
          Tr. 19:17-18. Because the defendants did not file a written brief in opposition, and because the
          defendants did not dispute the factual and procedural posture of the case as posited by the
          plaintiffs, see generally Hr’g Tr., the court accepts the plaintiffs’ account of the facts as set forth
          in their motion.
2
          The defendants in this action are not parties to the New Jersey suit. See Pls.’ Mot., Exs. C & D.

                                                        3
the FDA to rescind its approval of Teva’s application. See generally Compl.; Pls.’ Mot. At an

emergency hearing held that same day the court denied the plaintiffs’ motions from the bench for

the reasons set forth below.



                                         III.   ANALYSIS

                            A.    Legal Standard for Injunctive Relief

        This court may issue interim injunctive relief only when the movant demonstrates “[1]

that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the

absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an

injunction is in the public interest.” Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365,

374 (2008) (citing Munaf v. Geren, 128 S. Ct. 2207, 2218-19 (2008)). It is particularly important

for the movant to demonstrate a likelihood of success on the merits. Cf. Benten v. Kessler, 505

U.S. 1084, 1085 (1992) (per curiam). Indeed, absent a “substantial indication” of likely success

on the merits, “there would be no justification for the court’s intrusion into the ordinary

processes of administration and judicial review.” Am. Bankers Ass’n v. Nat’l Credit Union

Admin., 38 F. Supp. 2d 114, 140 (D.D.C. 1999) (internal quotation omitted).

        Because interim injunctive relief is an extraordinary form of judicial relief, courts should

grant such relief sparingly. Mazurek v. Armstrong, 520 U.S. 968, 972 (1997). The Supreme

Court has observed “that a preliminary injunction is an extraordinary and drastic remedy, one that

should not be granted unless the movant, by a clear showing, carries the burden of persuasion.”

Id. Therefore, although the trial court has the discretion to issue or deny a preliminary

injunction, it is not a form of relief granted lightly. In addition, any injunction that the court


                                                   4
issues must be carefully circumscribed and “tailored to remedy the harm shown.” Nat’l Treasury

Employees Union v. Yeutter, 918 F.2d 968, 977 (D.C. Cir. 1990).

  B.    The Court Denies the Plaintiffs’ Motions for a TRO and a Preliminary Injunction

                        1. The Plaintiffs Have Failed to Demonstrate
                       a Substantial Likelihood of Success on the Merits

       The plaintiffs argue that, because the Federal Circuit entered an order staying the New

Jersey district court’s judgment, the thirty-month period was still in effect and the FDA should

not have approved any pending generic applications regarding oxaliplatin. Pls.’ Mot. at 2. The

defendants retort that the FDA was bound by the Hatch-Waxman Act to approve the generic

applications once the New Jersey district court entered its judgment, regardless of the stay

entered by the Federal Circuit. Hr’g Tr. 12:21-13:4. The parties agree that this is a case of first

impression in which this court is called to determine whether a stay entered by an appellate court

overrides the terminating effect that the entry of a district court judgment has on the thirty-month

period under the Hatch-Waxman Act. Hr’g Tr. 11:10-12.

       The plaintiffs argue that the Nken v. Holder, 129 S. Ct. 1749 (2009) rationale governs the

issue and outcome. Pls.’ Mot. at 8-9. In Nken, the Supreme Court articulated the differences

between an injunction and a stay. See generally Nken, 129 S. Ct. 1749. The petitioner, an alien

subject to a deportation order from the Board of Immigration Appeals (“BIA”), sought a stay of

the BIA’s order pending his appeal. Id. at 1754-55. The government objected, arguing that the

Illegal Immigration Reform and Immigrant Responsibility Act (“IIRIRA”) prohibited such action

unless the petitioner could show by “clear and convincing evidence that the entry or execution of

such order was prohibited as a matter of law,” as opposed to the more lenient standard applicable



                                                 5
to motions to stay. Id. at 1756 (quoting 8 U.S.C. § 1252(f)). Holding that a stay and an

injunction “serve different purposes,” the Court noted that an injunction “direct[s] the conduct of

a particular actor [while] a stay operates upon the judicial proceeding.” Nken, 129 S. Ct. at 1757-

58. The plaintiffs here maintain that, because the Nken Court held that a stay divests a district

court’s order of its enforceability, the FDA had no authority to approve the applications filed by

the defendants in the New Jersey suit. Pls.’ Mot. at 9; Hr’g Tr. 6:15-7:1. The defendants, on the

other hand, aver that the statutory language is clear: the FDA must approve the generic

applications based on the date of the entry of a judgment from the district court, not the date on

which that judgment becomes enforceable. Hr’g Tr. 12:24-13:7. The Nken decision does not

address the central issue in the instant case: the difference, if any, between the date of the entry of

judgment and the date of enforceability of that judgment. See generally Nken, 129 S. Ct. 1749.

       Although the plaintiffs rely on the Federal Circuit’s ruling in In re Aventis Pharma S.A.,

2008 WL 5691012 (C.A. Fed. (Cal) July 23, 2008), Pls.’ Mot. at 9, the decision, in fact,

undermines the plaintiffs’ position. Aventis dealt with a similar situation in which a

pharmaceutical company appealed a district court’s ruling that its patent was unenforceable.

Aventis, 314 Fed. Appx. at 292. There is, however, a crucial distinction between Aventis and the

instant case: the Federal Circuit in Aventis did not simply stay the district court’s order, but

instead “order[ed] the district court to temporarily defer entry of judgment, pending . . .

resolution of the mandamus petition.” Id. (emphasis added). Thus, the district court was

expressly ordered not to enter judgment, the entry of judgment provision by its terms could not

apply. Here, in contrast, the New Jersey court did enter a judgment, Pls.’ Mot. at 7, and that

judgment was stayed, id., Ex. D. The plain language of the entry of judgment provision of the


                                                  6
Hatch-Waxman Act is clear that the FDA’s approval of a generic application “shall be made

effective on the [] date on which the court enters judgment.” 21 U.S.C. § 355(c)(3)(C)(i)(I)

(emphasis added). Because the New Jersey court actually entered judgment, triggering the entry

of judgment provision in the Hatch-Waxman Act requiring the FDA to approve the pending

applications, the plaintiffs have failed to demonstrate a likelihood of success on the merits of

their claim. Although the foregoing alone provides a sufficient basis for denying the plaintiffs

the relief they seek, Am. Bankers Ass’n, 38 F. Supp. 2d at 140, there are other factors that

militate against injunctive relief, which the court touches upon briefly.

              2.   The Plaintiffs Have Failed to Demonstrate Irreparable Harm
                    and that the Public Interest Favors Injunctive Relief3

       [REDACTED]4 The defendants counter that, if the plaintiffs prevail in the New Jersey

suit they will be able to obtain damages to compensate for any financial injury caused by the

generic drug manufacturers’ violation of the Federal Circuit’s order. Hr’g Tr. 14:7-11.

       In the D.C. Circuit, “economic loss does not, in and of itself, constitute irreparable harm.”

Wis. Gas Co. v. Fed. Energy Regulatory Comm’n, 758 F.2d 669, 674 (D.C. Cir. 1985) (stating

that “[m]ere injuries, however substantial, in terms of money, time and energy . . . are not

enough. The possibility that adequate compensatory or other corrective relief will be available at

a later date, in the ordinary course of litigation weighs heavily against a claim of irreparable



3
       The defendants do not address the balance of equities factor, see Hr’g Tr. 16:13-16, and the court
       acknowledges that this factor favors the plaintiffs.
4
       Pursuant to the court’s sealing order, Order (Aug. 10, 2009) and the subsequent order un-sealing
       the case but maintaining certain documents under seal, Order (Aug. 14, 2009), certain
       information contained in this memorandum opinion is protected from public disclosure and is
       only available to the parties at this time.

                                                   7
harm”). Nevertheless, a TRO may be the appropriate equitable remedy “where the loss threatens

the very existence of the movant’s business.” Wash. Metro. Area Transit Comm’n v. Holiday

Tours, Inc., 559 F.2d 841, 843 n.2 (D.C. Cir. 1977).

        In this case, however, the plaintiffs do not need the “extraordinary and drastic remedy” of

injunctive relief to protect them from the prospect of economic harm. Mazurek, 520 U.S. at 972.

Rather, the plaintiffs can protect their economic interests by seeking enforcement of the Federal

Circuit’s order staying the New Jersey suit and potentially collect damages from any

manufacturer who violates that order.

        With respect to the public interest involved in this case, the plaintiffs allege that the

public is served by adherence to the applicable law – the Hatch-Waxman Act, Pls.’ Mot. at 15-

16; Hr’g Tr. 9:8-17. For the same reasons that the court determined that the plaintiffs are

unlikely to succeed on the merits of their claim, the court rejects this argument. The defendants

submit that the public interest lies in access to generic drugs that have been FDA approved, Hr’g

Tr. 16:16-25. Because the plaintiffs have not demonstrated that they are substantially likely to

succeed on the merits of their claim, keeping generic oxaliplatin products off the market will not

benefit the public interest. See Serono Laboratories, Inc. v. Shalala, 158 F.3d 1313, 1326 (D.C.

Cir. 1998) (explaining that “if . . . [the movant] is not likely to establish that [the generic drug

applications were] wrongly approved, then the public interest considerations weigh against an

injunction”), Bristol-Myers Squibb Co. v. Shalala, 923 F. Supp. 212, 222 (D.D.C. 1996)

(holding that the “public will . . . benefit from increased competition . . . . A delay in the

approval [of the generic drug application], without a showing of a substantial likelihood on the

merits[,] would not further the public interest”).


                                                     8
                                    IV.    CONCLUSION

       For the foregoing reasons, the court denies the plaintiffs’ motion for a TRO and

preliminary injunction. An Order consistent with this Memorandum Opinion was issued on

August 11, 2009.



                                                    RICARDO M. URBINA
                                                   United States District Judge




                                               9
