Court Dismisses Case against Navinta, Sandoz over Naropin Generic

Case Filed: Jul 22, 2010

Case Closed: Jul 01, 2013

Court: New Jersey District Court 

Judge: Joel A. Pisano

Case Summary:

A patent infringement suit was filed by APP Pharmaceuticals against Navinta,  Hospira, Sandoz, Sagent Pharmaceuticals and Strides as a result of their filing an Abbreviated New Drug Application (ANDA) with the FDA concerning their intent to market generic versions of APP’s ropivacaine hydrochloride injection product, Naropin®, a pain management drug.

The patents involved in this suit were:

US5670524 entitled Methods and compositions for the treatment of pain utilizing ropivacaine issued on Sep 23, 1997 and expiring* by Sep 23, 2014

US5834489 entitled Methods and compositions for the treatment of pain utilizing ropivacaine issued on Nov 10, 1998 and expired* Jun 28, 2013

The patents-in-suit generally relate to Naropin and its uses, as said in complaint. APP alleged that one ANDA was filed by Navinta in collaboration with Sandoz, a second one by Hospira and another by Sagent and Strides. The patents in suit were last assigned+ to APP (source: MaxVal’s Assignment Database). 

APP is the current holder of New Drug Application (NDA) 20-553 for Naropin, which was approved by FDA in Sep 1999. Naropin helps to numb the injected area so that less pain is felt.

In 2010, Sagent, Strides and Hospira were dismissed from the case.  Recently on July 01, the Court ordered all claims and counterclaims against APP, Navinta and Sandoz to be dismissed with prejudice, thereby closing the case. All attorneys’ fees, costs and expenses are to be borne by the respective parties.

See case 3:10-cv-03708 for more details. To get alerts on cases filed/closed, subscribe to our Litigation Alerts.

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* Expected expiration date. Patent Term Estimator is a free web-based tool that automatically calculates patent terms and expiration dates for U.S. utility patents

+ MaxVal offers Patent Assignment Alert service where subscribers receive email alerts when assignments relating to target applications, patents or entities of interest are recorded.