DCT

1:17-cv-01553

iCeutica Pty Ltd v. Apotex Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01553, D. Del., 10/31/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware based on Defendant Apotex Corp. being a Delaware corporation and both defendants conducting business in the state.
  • Core Dispute: Plaintiffs allege that Defendants' submission of an Abbreviated New Drug Application (ANDA) to the FDA for generic versions of Plaintiffs' ZORVOLEX® product constitutes an act of infringement of seven patents related to formulations of the nonsteroidal anti-inflammatory drug diclofenac.
  • Technical Context: The technology concerns methods for producing low-dose, fast-acting formulations of diclofenac by creating nanoparticles of the active ingredient to improve its dissolution rate and bioavailability.
  • Key Procedural History: This action was initiated under the Hatch-Waxman Act following Plaintiffs' receipt of a Paragraph IV Notice Letter from Apotex, which asserted that the patents-in-suit are invalid and/or would not be infringed by Apotex's proposed generic products. The patents are listed in the FDA's "Orange Book" as covering ZORVOLEX®.

Case Timeline

Date Event
2009-04-24 Patent Priority Date (’544, ’387, ’721, ’854, ’095, ’096, ’328 Patents)
2014-03-25 U.S. Patent No. 8,679,544 Issues
2015-04-07 U.S. Patent No. 8,999,387 Issues
2015-04-28 U.S. Patent No. 9,017,721 Issues
2015-11-03 U.S. Patent No. 9,173,854 Issues
2015-11-10 U.S. Patent No. 9,180,095 Issues
2015-11-10 U.S. Patent No. 9,180,096 Issues
2015-11-17 U.S. Patent No. 9,186,328 Issues
2017-09-21 Plaintiffs receive Apotex's Paragraph IV Letter regarding ANDA No. 210299
2017-10-31 Complaint Filed

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

U.S. Patent No. 8,679,544 - "Formulation of Diclofenac," issued March 25, 2014

The Invention Explained

  • Problem Addressed: The patent's background section describes the significant problem of poor bioavailability for therapeutic agents that are poorly soluble in water, such as diclofenac, which can lead to slow absorption and delayed onset of therapeutic effect (US 8,679,544 B2, col. 1:15-24). Conventional milling techniques are noted as having limitations in their ability to sufficiently reduce particle size to overcome this issue (US 8,679,544 B2, col. 1:40-52).
  • The Patented Solution: The invention provides methods for producing very fine particles of diclofenac using dry milling processes in combination with a millable grinding matrix (US 8,679,544 B2, Abstract). This technique reduces the particle size of the diclofenac, thereby increasing its surface area, which leads to a higher dissolution rate and faster absorption, allowing for a more rapid therapeutic effect (US 8,679,544 B2, col. 3:1-4).
  • Technical Importance: This improved formulation allows for the creation of effective, low-dose diclofenac medicaments suitable for treating acute pain, expanding its use beyond chronic pain management (US 8,679,544 B2, col. 3:1-4).

Key Claims at a Glance

  • The complaint does not identify any specific asserted claims for the ’544 Patent.

U.S. Patent No. 8,999,387 - "Formulation of Diclofenac," issued April 7, 2015

The Invention Explained

  • Problem Addressed: The patent addresses the same technical challenge as the ’544 Patent: the poor water solubility and slow absorption of diclofenac, which limits its effectiveness for conditions requiring rapid pain relief (US 8,999,387 B2, col. 1:15-24).
  • The Patented Solution: The invention is a method of treating pain by administering a pharmaceutical composition containing diclofenac particles produced through dry milling (US 8,999,387 B2, Abstract). The reduced particle size of the diclofenac in the composition is intended to provide faster absorption and a more rapid onset of pain relief compared to conventional formulations (US 8,999,387 B2, col. 3:1-4).
  • Technical Importance: The method enables the use of lower doses of diclofenac for effective pain management, which may be significant given the well-known side effects associated with long-term NSAID use.

Key Claims at a Glance

  • The complaint does not identify any specific asserted claims for the ’387 Patent.

Multi-Patent Capsule: U.S. Patent No. 9,017,721

  • Patent Identification: U.S. Patent No. 9,017,721, "Formulation of Diclofenac," issued April 28, 2015.
  • Technology Synopsis: This patent claims specific unit dose pharmaceutical compositions containing diclofenac acid particles of a certain median particle size. The claims are characterized by specific dissolution rates, such as releasing at least 82% of the diclofenac by weight within a set time frame when tested under specific USP conditions (US 9,017,721 B2, col. 69:30-44).
  • Asserted Claims: The complaint does not identify specific asserted claims. The patent contains two independent claims (1 and 8).
  • Accused Features: The accused features are Apotex's proposed generic 18 mg and 35 mg diclofenac capsules, which allegedly fall within the scope of the patent's claims (Compl. ¶¶ 99-100).

Multi-Patent Capsule: U.S. Patent No. 9,173,854

  • Patent Identification: U.S. Patent No. 9,173,854, "Formulation of Diclofenac," issued November 3, 2015.
  • Technology Synopsis: This patent claims unit dose compositions containing either 18 mg or 35 mg of diclofenac acid, where the particles have a specified median size and dissolution profile. The claims require that the composition provides perceptible pain relief to a patient more quickly than a 400 mg dose of celecoxib (US 9,173,854 B2, col. 71:21-25).
  • Asserted Claims: The complaint does not identify specific asserted claims. The patent contains two independent claims (1 and 16).
  • Accused Features: Apotex's proposed generic 18 mg and 35 mg diclofenac capsules are alleged to infringe the claims of the patent (Compl. ¶¶ 115-116).

Multi-Patent Capsule: U.S. Patent No. 9,180,095

  • Patent Identification: U.S. Patent No. 9,180,095, "Formulation of Diclofenac," issued November 10, 2015.
  • Technology Synopsis: This patent claims methods for treating pain by administering a solid oral unit dose of 18 mg or 35 mg of diclofenac acid. The claims specify a median particle size for the diclofenac and require that the unit dose provides perceptible pain relief when administered to a patient (US 9,180,095 B2, col. 71:2-31).
  • Asserted Claims: The complaint does not identify specific asserted claims. The patent contains two independent claims (1 and 16).
  • Accused Features: The accused features are the methods of using Apotex's proposed generic diclofenac capsules as will allegedly be instructed on their labels (Compl. ¶¶ 131-132).

Multi-Patent Capsule: U.S. Patent No. 9,180,096

  • Patent Identification: U.S. Patent No. 9,180,096, "Formulation of Diclofenac," issued November 10, 2015.
  • Technology Synopsis: This patent claims solid oral unit dose compositions containing diclofenac acid particles with a specified median particle size. The claims are further defined by pharmacokinetic parameters, such as achieving a maximum plasma concentration (Tmax) within a certain time frame after administration to a subject (US 9,180,096 B2, col. 71:19-25).
  • Asserted Claims: The complaint does not identify specific asserted claims. The patent contains two independent claims (1 and 16).
  • Accused Features: Apotex's proposed generic 18 mg and 35 mg diclofenac capsules are alleged to infringe the claims of the patent (Compl. ¶¶ 161-162).

Multi-Patent Capsule: U.S. Patent No. 9,186,328

  • Patent Identification: U.S. Patent No. 9,186,328, "Formulation of Diclofenac," issued November 17, 2015.
  • Technology Synopsis: This patent claims methods for treating pain by administering a solid oral unit dose of diclofenac. The claims are distinguished by pharmacokinetic properties, requiring that the administered dose achieves a certain maximum plasma concentration (Cmax) that is not substantially affected by whether the patient is in a fed or fasted state (US 9,186,328 B2, col. 71:22-31).
  • Asserted Claims: The complaint does not identify specific asserted claims. The patent contains two independent claims (1 and 16).
  • Accused Features: The accused features are the methods of using Apotex's proposed generic diclofenac capsules, which will allegedly be instructed on the product's label (Compl. ¶¶ 177-178).

III. The Accused Instrumentality

  • Product Identification: The accused products are Apotex's proposed generic Diclofenac capsules in 18 mg and 35 mg dosages (Compl. ¶1).
  • Functionality and Market Context: The accused products are generic versions of Plaintiffs' "ZORVOLEX®" brand diclofenac capsules, a nonsteroidal anti-inflammatory drug (NSAID) (Compl. ¶¶1, 40). This lawsuit was initiated under the Hatch-Waxman Act after Apotex filed Abbreviated New Drug Application (ANDA) No. 210299 with the FDA, seeking approval to market its generic versions before the expiration of the patents-in-suit (Compl. ¶40). The complaint alleges that Plaintiffs have been unable to obtain a copy of the ANDA itself and are basing their infringement allegations primarily on Apotex's Paragraph IV letter (Compl. ¶49).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-by-claim analysis of infringement. It does not identify any specific claims of the seven asserted patents that are allegedly infringed. Instead, it makes general allegations that Apotex's submission of ANDA No. 210299 is an act of infringement under 35 U.S.C. § 271(e)(2) and that the future commercial manufacture and sale of the proposed generic products will constitute direct and indirect infringement of the patents-in-suit (Compl. ¶¶ 51-53, 67-72). The complaint states this lack of specificity is due to Plaintiffs' inability to obtain a copy of Apotex's ANDA prior to filing suit (Compl. ¶47, ¶49).

  • Identified Points of Contention:
    • Factual Questions: The central issue for the case will be a factual one dependent on discovery. The primary question is what Apotex's ANDA No. 210299 discloses regarding the formulation and manufacturing process of its proposed generic diclofenac capsules. The analysis will focus on whether the particle size, excipients, dissolution profiles, and pharmacokinetic properties of Apotex's product meet the limitations of any asserted claims from the patents-in-suit.
    • Scope Questions: Assuming the factual details are established, a potential point of contention may arise over whether Apotex has successfully "designed around" the patent claims. For example, a question for the court may be whether the manufacturing process used by Apotex constitutes "dry milling" as that term is used and defined in the patent specifications.

V. Key Claim Terms for Construction

The complaint does not identify specific asserted claims or disputed claim terms, precluding a detailed analysis of potential claim construction issues. Based on the technology, practitioners may focus on terms defining the manufacturing process (e.g., "dry milling"), the physical characteristics of the resulting drug particles (e.g., "median particle size on a volume average basis"), and the performance of the final composition (e.g., "dissolution rate," pharmacokinetic parameters like "Tmax"). The construction of these terms would be central to determining both infringement and validity.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement with respect to the asserted method patents (e.g., the ’387, ’095, and ’328 Patents) (Compl. ¶¶ 75, 137, 183). The inducement allegations are based on the assertion that Apotex's product labeling and instructions will actively encourage and instruct patients to use the generic capsules in a manner that directly infringes the claimed methods of treatment (Compl. ¶¶ 69, 76, 131, 138, 177, 184). The contributory infringement allegations are based on the assertion that the proposed generic capsules are a material part of the patented methods, are especially made or adapted for an infringing use, and have no substantial non-infringing uses (Compl. ¶¶ 71-72, 77, 133-134, 139, 179-180, 185).
  • Willful Infringement: The complaint does not contain a separate count for willful infringement. However, it alleges that upon becoming aware of the patents, Apotex "either actually knew of the potential for infringement... or was willfully blind as to the potential for that infringement" (Compl. ¶¶ 74, 91, 136, 153, 182, 199). This language tracks the standard for willfulness. Knowledge is alleged to have occurred no later than when the patents were issued or listed in the FDA's Orange Book (Compl. ¶¶ 73, 90, 135, 152, 181, 198).

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

  • A central issue will be one of discovery and evidence: what does Apotex's confidential ANDA filing reveal about the composition, manufacturing process, and performance characteristics of its proposed generic diclofenac capsules? The outcome of the infringement analysis is entirely dependent on the technical details contained in that filing, which were unavailable to the Plaintiffs at the time of the complaint.
  • A second key question will concern infringement versus "design-around": assuming Apotex's product is bioequivalent to ZORVOLEX®, does it achieve this bioequivalence by practicing the patented inventions, or has Apotex developed a formulation and/or manufacturing process that falls outside the scope of the asserted claims while still meeting FDA requirements for a generic drug?
  • A third core issue, raised by Apotex's Paragraph IV certification, will be patent validity: are the claims of the seven Orange Book-listed patents, which cover various aspects of a low-dose diclofenac formulation, valid and enforceable in light of the prior art existing at the time of the invention?