DCT

1:17-cv-00677

Purdue Pharma LP v. Alvogen Pine Brook LLC

Log In
Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00677, D. Del., 06/05/2017
  • Venue Allegations: Venue is alleged to be proper based on Defendants' appearances, actions, and filing of counterclaims in a related, consolidated action in the same district, as well as on the basis that the underlying facts and issues arise from a common nucleus of operative facts with that action.
  • Core Dispute: Plaintiff alleges that Defendants' Abbreviated New Drug Applications (ANDAs) seeking to market generic versions of Plaintiff's Hysingla® ER opioid product constitute an act of infringement of nine U.S. patents related to tamper-resistant and controlled-release pharmaceutical formulations.
  • Technical Context: The patents relate to formulations for opioid analgesics, such as hydrocodone, designed to provide extended pain relief while simultaneously incorporating features that deter common methods of tampering intended for substance abuse.
  • Key Procedural History: This complaint follows a series of previously filed lawsuits between the same parties concerning generic versions of Hysingla® ER, which were consolidated into a lead case (the "Consolidated Action"). The nine patents asserted in this complaint were issued after the last action was filed in the Consolidated Action and are related by patent family to patents asserted in that earlier case.

Case Timeline

Date Event
2000-10-30 Earliest Priority Date for ’236 Patent and ’804 Patent
2006-08-25 Earliest Priority Date for ’412, ’413, ’389, ’390, ’391, ’380 Patents
2015-06-19 Alvogen files its ANDA for generic Hysingla® ER (on or before this date)
2015-06-23 Actavis files its ANDA for generic Hysingla® ER (on or before this date)
2015-08-05 Plaintiff files initial complaint against Defendants in Consolidated Action
2016-11-08 U.S. Patent No. 9,486,412 Issues
2016-11-08 U.S. Patent No. 9,486,413 Issues
2016-11-15 U.S. Patent No. 9,492,389 Issues
2016-11-15 U.S. Patent No. 9,492,390 Issues
2016-11-15 U.S. Patent No. 9,492,391 Issues
2016-12-13 U.S. Patent No. 9,517,236 Issues
2017-01-17 U.S. Patent No. 9,545,380 Issues
2017-02-21 U.S. Patent No. 9,572,779 Issues
2017-02-21 U.S. Patent No. 9,572,804 Issues
2017-05-05 Actavis sends Paragraph IV Notice Letter to Plaintiff
2017-06-05 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,486,412 - “TAMPER RESISTANT DOSAGE FORMS,” issued November 8, 2016

The Invention Explained

  • Problem Addressed: The patent background describes the problem of opioid abuse, where individuals tamper with controlled-release dosage forms (e.g., by crushing or dissolving) to make the full dose of the opioid immediately available for illicit administration, which can lead to a fatal overdose. (Compl. ¶1; ’412 Patent, col. 1:26-44).
  • The Patented Solution: The invention is a pharmaceutical tablet formulation that resists tampering. It is created by combining high and low molecular weight polyethylene oxides with an opioid, shaping the blend into a tablet, and then "curing" it by heating it to a temperature between about 60°C to 90°C. This process allegedly creates a tablet that is difficult to crush and resists extraction of the active ingredient. (’412 Patent, Abstract; col. 2:65-3:12).
  • Technical Importance: This technology addresses a significant public health concern by creating a physical barrier to opioid abuse, making it more difficult for individuals to bypass the controlled-release mechanism of high-potency painkillers.

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims" without specifying which ones (Compl. ¶58). Independent claim 1 is representative:
  • A cured shaped pharmaceutical tablet comprising:
    • (1) at least one low molecular weight polyethylene oxide having, based on rheological measurements, an approximate molecular weight of less than 1,000,000,
    • (2) at least one high molecular weight polyethylene oxide having, based on rheological measurements, an approximate molecular weight of at least 1,000,000,
    • (3) at least one opioid or a pharmaceutically acceptable salt thereof, and
    • (4) at least one component selected from an additive and a coating;
    • wherein said tablet is prepared by a process comprising the steps of: combining said opioid, low and high molecular weight polyethylene oxides, and optionally said additive to form at least one blend; applying said blend to form a shaped tablet; and curing said shaped tablet by subjecting the shaped tablet to an air temperature from about 60 to about 90° C. for a duration of about 15 minutes to 10 hours.

U.S. Patent No. 9,486,413 - “TAMPER RESISTANT DOSAGE FORMS,” issued November 8, 2016

The Invention Explained

  • Problem Addressed: As with its sibling patent, the ’413 Patent addresses the problem of opioid abuse facilitated by tampering with pharmaceutical dosage forms to achieve rapid release of the active drug. (’413 Patent, col. 1:26-44).
  • The Patented Solution: The invention is a method of preparing a tamper-resistant tablet. The method comprises the steps of compressing a matrix that includes an opioid (hydrocodone) and polyethylene oxides, and then curing the tablet at a temperature of about 62° C to 90° C. This curing step is described as imparting physical resistance to tampering, such as crushing, to the final dosage form. (’413 Patent, Abstract; col. 166:60-167:13).
  • Technical Importance: The method provides a specific manufacturing process aimed at creating abuse-deterrent properties in an opioid formulation, a key objective in the development of safer opioid analgesics.

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims" (Compl. ¶77). Independent claim 1 is representative:
  • A method of treating pain comprising administering to a patient in need thereof a cured shaped pharmaceutical tablet comprising:
    • (1) at least one first compression shaped and then air cured matrix without compression, for a duration of at least about 5 minutes, said matrix comprising hydrocodone or a pharmaceutically acceptable salt thereof in combination with at least one high molecular weight polyethylene oxide...
    • (2) optionally a second air cured matrix comprising an opioid or a pharmaceutically acceptable salt thereof in combination with at least one low molecular weight polyethylene oxide...
    • (3) optionally a coating;
    • wherein in said tablet said high molecular weight polyethylene oxide is at least 2.4% by weight of the total weight of said uncoated tablet.

U.S. Patent No. 9,492,389 - “TAMPER RESISTANT DOSAGE FORMS”

  • Patent Identification: U.S. Patent No. 9,492,389, “TAMPER RESISTANT DOSAGE FORMS,” issued November 15, 2016 (Compl. ¶40).
  • Technology Synopsis: This patent is directed to a method of treating pain by administering a cured, shaped pharmaceutical tablet containing hydrocodone and high molecular weight polyethylene oxide. The method specifies curing the tablet at an air temperature between 62°C to 90°C for at least 15 minutes, which imparts tamper-resistant properties.
  • Asserted Claims: "one or more claims" (Compl. ¶87).
  • Accused Features: Defendants' ANDA Products, which are generic versions of Hysingla® ER, are alleged to be covered by the claims (Compl. ¶87).

U.S. Patent No. 9,492,390 - “TAMPER RESISTANT DOSAGE FORMS”

  • Patent Identification: U.S. Patent No. 9,492,390, “TAMPER RESISTANT DOSAGE FORMS,” issued November 15, 2016 (Compl. ¶41).
  • Technology Synopsis: This patent claims a method of treating pain by administering a cured pharmaceutical tablet comprising hydrocodone and a combination of high and low molecular weight polyethylene oxides. A key feature is the process step of curing the shaped tablet at an air temperature between 60°C and 90°C.
  • Asserted Claims: "one or more claims" (Compl. ¶97, ¶106).
  • Accused Features: Both Alvogen's and Actavis's ANDA Products are alleged to be covered by the claims (Compl. ¶97, ¶106).

U.S. Patent No. 9,492,391 - “TAMPER RESISTANT DOSAGE FORMS”

  • Patent Identification: U.S. Patent No. 9,492,391, “TAMPER RESISTANT DOSAGE FORMS,” issued November 15, 2016 (Compl. ¶42).
  • Technology Synopsis: This patent covers a method of treating pain by administering a cured tablet containing hydrocodone and polyethylene oxides. The claims focus on the method of preparation, which includes a curing step at an air temperature between 60°C and 90°C for a duration of 15 minutes to 90 minutes.
  • Asserted Claims: "one or more claims" (Compl. ¶116).
  • Accused Features: Alvogen's ANDA Products are alleged to be covered by the claims (Compl. ¶116).

U.S. Patent No. 9,545,380 - “TAMPER RESISTANT DOSAGE FORMS”

  • Patent Identification: U.S. Patent No. 9,545,380, “TAMPER RESISTANT DOSAGE FORMS,” issued January 17, 2017 (Compl. ¶43).
  • Technology Synopsis: This patent is directed to a method of treating pain by administering a cured tablet that includes hydrocodone and polyethylene oxide. The inventive method requires a curing step where the tablet is heated via heated air for a duration of 15 minutes to about 10 hours.
  • Asserted Claims: "one or more claims" (Compl. ¶126).
  • Accused Features: Alvogen's ANDA Products are alleged to be covered by the claims (Compl. ¶126).

U.S. Patent No. 9,517,236 - “CONTROLLED RELEASE HYDROCODONE FORMULATIONS”

  • Patent Identification: U.S. Patent No. 9,517,236, “CONTROLLED RELEASE HYDROCODONE FORMULATIONS,” issued December 13, 2016 (Compl. ¶44).
  • Technology Synopsis: This patent claims a solid oral controlled-release dosage form of hydrocodone that provides specific pharmacokinetic profiles, such as a time to peak plasma concentration (Tmax) of about 4 to 14 hours and a C24/Cmax ratio of 0.55 to 1.0, suitable for once-daily administration.
  • Asserted Claims: "one or more claims" (Compl. ¶136, ¶145).
  • Accused Features: Both Alvogen's and Actavis's ANDA Products, being generic equivalents intended for once-daily use, are alleged to meet the claimed pharmacokinetic parameters (Compl. ¶136, ¶145).

U.S. Patent No. 9,572,779 - “ENCASED TAMPER RESISTANT CONTROLLED RELEASE DOSAGE FORMS”

  • Patent Identification: U.S. Patent No. 9,572,779, “ENCASED TAMPER RESISTANT CONTROLLED RELEASE DOSAGE FORMS,” issued February 21, 2017 (Compl. ¶45).
  • Technology Synopsis: This patent describes a solid controlled-release dosage form with a "core-shell" structure. An inner core contains a portion of an opioid dispersed in a matrix, and an outer shell encases the core and contains a second portion of the opioid. This structure is designed to achieve a near-zero-order release profile, making it tamper-resistant.
  • Asserted Claims: "one or more claims" (Compl. ¶155, ¶164).
  • Accused Features: The complaint alleges that Defendants' ANDA products, as generic versions of Hysingla® ER, are covered by the claims related to this dosage form structure (Compl. ¶155, ¶164).

U.S. Patent No. 9,572,804 - “CONTROLLED RELEASE HYDROCODONE FORMULATIONS”

  • Patent Identification: U.S. Patent No. 9,572,804, “CONTROLLED RELEASE HYDROCODONE FORMULATIONS,” issued February 21, 2017 (Compl. ¶46).
  • Technology Synopsis: Similar to the '236 patent, this patent claims a solid oral controlled-release dosage form of hydrocodone. The claims focus on achieving specific pharmacokinetic properties, such as a C24/Cmax ratio between 0.55 and 1.0, which makes the drug suitable for effective once-a-day pain management.
  • Asserted Claims: "one or more claims" (Compl. ¶174, ¶183).
  • Accused Features: Defendants' ANDA Products are accused of infringing by virtue of being formulated as once-daily generic equivalents of Hysingla® ER, which allegedly exhibit the claimed pharmacokinetic profile (Compl. ¶174, ¶183).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the generic hydrocodone bitartrate extended-release tablet products described in Alvogen's ANDA No. 208269 and Actavis's ANDA No. 208389 (collectively, "ANDA Products") (Compl. ¶5, ¶6).

Functionality and Market Context

The ANDA Products are generic versions of Purdue's Hysingla® ER product, designed for the "management of pain severe enough to require daily, around-the-clock, long-term opioid treatment" (Compl. ¶23). By filing ANDAs, Defendants are seeking FDA approval to market these products as bioequivalent to Hysingla® ER in various dosage strengths (20 mg, 30 mg, 40 mg, 60 mg, 80 mg, 100 mg, and 120 mg) before the expiration of the patents-in-suit (Compl. ¶4, ¶5, ¶6).

IV. Analysis of Infringement Allegations

The complaint alleges infringement under 35 U.S.C. § 271(e)(2), which defines the submission of an ANDA seeking approval to market a generic drug before the expiration of a patent covering that drug as a technical act of infringement (Compl. ¶57, ¶66). The complaint does not provide a detailed, element-by-element comparison of the asserted patent claims to the specific formulations described in the Defendants' ANDA filings. The allegations are conclusory, stating that the ANDA Products, or their manufacture and use, "are covered by one or more claims" of each asserted patent (e.g., Compl. ¶58, ¶67, ¶77).

No probative visual evidence provided in complaint.

The complaint does not provide sufficient detail for analysis of specific infringement theories or to create a claim-chart summary. The central dispute will depend on evidence and claim constructions developed during discovery and litigation, which are not detailed in the complaint itself.

V. Key Claim Terms for Construction

"curing said shaped tablet by subjecting the shaped tablet to an air temperature from about 60 to about 90° C." (from '412 Patent, Claim 1)

  • Context and Importance: The "curing" step is central to the asserted patents covering tamper-resistant formulations ('412, '413, etc.). The definition of what constitutes "curing" and how the specified temperature range is measured and maintained will be critical to determining whether the manufacturing processes used for the ANDA Products fall within the scope of the claims. Practitioners may focus on this term because minor variations in a generic's manufacturing process could be argued to fall outside these specific parameters.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes multiple methods for achieving the curing temperature, including convection curing devices like a coating pan or fluidized bed, suggesting the specific apparatus is not limiting. (’412 Patent, col. 19:35-42). This may support an argument that any heating process achieving the claimed thermal effect is covered.
    • Evidence for a Narrower Interpretation: The patent provides detailed temperature profiles and defines the start and end points of the curing step with high specificity (e.g., "the point in time when the heating is stopped or at least reduced and the temperature...subsequently drops below the curing temperature by more than about 10° C."). (’412 Patent, col. 18:29-35). This language may support a narrower construction requiring adherence to these specific thermal profiles, which a defendant's process might not meet.

"A solid oral controlled-release dosage form" which provides a "C24/Cmax ratio of 0.55 to 1.0" (from '236 Patent, Claim 11)

  • Context and Importance: This term, central to the pharmacokinetic patents ('236 and '804), defines the invention by its clinical performance rather than its physical composition. The infringement analysis for these claims will depend on whether the bioequivalence data in the Defendants' ANDAs demonstrates performance within this specific pharmacokinetic window.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is functional, focusing on the result (the C24/Cmax ratio). This may support an argument that any formulation that achieves this clinical outcome infringes, regardless of its specific composition or release mechanism.
    • Evidence for a Narrower Interpretation: The specification describes specific formulations used to achieve these pharmacokinetic results. A defendant may argue that the claims should be limited to formulations similar to those disclosed in the patent's examples, and that their different formulation, while bioequivalent overall, does not meet the specific claimed ratio under all conditions. (’236 Patent, Examples 1-3).

VI. Other Allegations

Indirect Infringement

The complaint alleges that if the ANDA Products are approved, Defendants will contribute to and induce infringement by others (e.g., patients and physicians) under 35 U.S.C. § 271(b)-(c) (Compl. ¶59, ¶68). The basis for these allegations is the intended commercial manufacture, use, and sale of the generic products for the same indications as the patented Hysingla® ER product.

Willful Infringement

The complaint alleges that Defendants have been aware of the existence of the patents-in-suit and have "no reasonable basis for believing" that their ANDA Products will not infringe, rendering the case "exceptional" under 35 U.S.C. § 285 (Compl. ¶64, ¶73). Actavis's alleged knowledge is specifically supported by its May 5, 2017 Paragraph IV notice letter (Compl. ¶52).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of process scope: Does the manufacturing process for the accused generic products, as detailed in the confidential ANDA filings, include a "curing" step that falls within the specific temperature and duration parameters claimed in Purdue's formulation patents? The case may turn on whether minor deviations in temperature profiles or heating methods are sufficient to place the accused process outside the literal scope of the claims.
  • A second key question will be one of pharmacokinetic equivalence: Does the bioequivalence data submitted in the ANDAs demonstrate that the generic products will exhibit the specific C24/Cmax ratio and Tmax claimed in the '236 and '804 patents, or can Defendants argue that while their products are bioequivalent for FDA purposes, they do not literally meet the narrow pharmacokinetic windows defined in the patent claims?
  • A final evidentiary question will be one of structural identity: For patents claiming a specific physical structure, such as the "core-shell" design of the ’779 patent, what evidence will emerge from discovery to show whether the accused generic tablets embody this particular encased, multi-layered structure or achieve a similar controlled-release profile through a different physical arrangement?