Photo Credit: Jr de Barbosa via Wikimedia Commons

The bulk of a patent infringement action against the maker of a under-the-tongue form of the opioid treatment drug Suboxone has survived a motion for dismissal in Delaware federal court.

In the wake of the decision issued Monday by U.S. District Judge Mitchell S. Goldberg, Indivior Inc. will have to face allegations that its Suboxone application infringed a patent that was later acquired by a competitor.

Goldberg's 18-page opinion allowed the bulk of Rhodes Pharmaceuticals' infringement claims to proceed in U.S. District Court for the District of Delaware, finding that Indivior did nothing to stop health care providers and patients from using Suboxone sublingual film after it learned of Rhodes' so-called '512 patent in 2016.

Rhodes had dropped a claim for direct infringement against Indivior during briefing on Indivior's motion to dismiss the suit. However, Goldberg, visiting from the Eastern District of Pennsylvania, found direct infringement by professionals in the field, and he allowed claims for induced, willful and contributory infringement to survive the pleading stage.

“While somewhat cursory in nature, these allegations are facially plausible and provide defendant notice of the induced infringement claim,” Goldberg wrote in an 18-page opinion. “At this early juncture of the litigation, I find that the complaint sufficiently pleads that defendant intentionally induced infringement by purposefully encouraging health care providers and patients to practice the method claims of the patent-in-suit.”

An attorney for Rhodes declined to comment on Tuesday, and counsel for Indivior did not return a call seeking comment on the ruling.

Rhodes' suit, filed in December 2016, accused Indivior of using the same prescribing information from its patent for four dosage strengths of Suboxone film, which is administered below the tongue and typically coupled with counseling and psychological support to counter opioid dependence.

Indivior argued that it could not have intended to induce infringement because prior to the issuance of Rhodes' patent in 2016, there was no patent on which Suboxone could have infringed.

But Goldberg found that Rhodes had adequately alleged that Indivior became aware of the supposed inducement after being served with the complaint, but still instructed others on how to use its drug. The extent of Indivior's allegedly infringing behavior, he said, would have to be decided after the sides could conduct discovery in the case.

“Plaintiff alleges that although Indivior began using the alleging infringing prescribing instructions before the '512 patent issued, Indivior continued to instruct physicians and patients to use Suboxone sublingual film in an infringing manner after it became aware of the '512 patent and its claimed methods,” he wrote.

“While defendant's theory could potentially have merit following discovery, it is a fact-based defense that cannot be decided on a Rule 12(b)(6) motion to dismiss.”

Rhodes is represented by John W. Shaw and Jeffrey T. Castellano of Shaw Keller.

Indivior is represented by Joseph B. Cicero and Stephanie S. Habelow of Chipman Brown Cicero & Cole and Adam P. Samansky and Thomas H. Wintner of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo.

The case is captioned Rhodes Pharmaceuticals v. Indivior.