Earlier, Ranbaxy was the first company who challenged innovator Glaxosmithkline (GSK) following Orange Book listed patent:
US4957924 (Expiry: Dec 23, 2009): Which covers Valacyclovir as product.
Subsequently, innovator sued Ranbaxy in New Jersey District Court in 2003. Afterwards, Ranbaxy got final approval from USFDA for this product on January 31, 2007 .
Further, as per paragraph IV patent litigation settlement agreement in July, 2007 with innovator Glaxosmithkline (GSK), Ranbaxy agreed to enter into the market in later half of 2009. Also, Ranbaxy entered into licensing agreement with innovator on two Orange Book listed patents US5879706 and US6107302 (both patents would expire on Jul 19, 2016), which covers polymorph and formulation of Valacyclovir.
Importantly, Ranbaxy is first Para IV filer for this product; accordingly, Ranbaxy would enjoy financially rewarding 180 days “First To File” market exclusivity.
Ranbaxy has manufactured the Valacyclovir hydrochloride 500 mg and 1 g tablets from it’s New Jersey based subsidiary Ohm Laboratories.
The other generic players who have received tentative approval from USFDA for this product are Dr. Reddy (June 26, 2009), Sandoz (July 30, 2007), Teva (October 4, 2007), Mylan (January 30, 2007), Watson (January 18, 2007). The other generic players would be able to launch their generic version after the expiry of 180 days exclusivity of Ranbaxy.