DCT

1:18-cv-01795

Genzyme Corp v. Apotex Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-01795, D. Del., 11/14/2018
  • Venue Allegations: Venue is alleged to be proper in Delaware because Defendant Apotex Corp. is a Delaware corporation and Defendant Apotex Inc., a Canadian corporation, may be sued in any judicial district.
  • Core Dispute: Plaintiffs allege that Defendants' submission of an Abbreviated New Drug Application (ANDA) to market a generic version of the drug CERDELGA® (eliglustat) constitutes an act of infringement of a patent covering a specific ceramide-like compound.
  • Technical Context: The technology relates to small-molecule inhibitors of glucosylceramide synthase, which are used for the long-term treatment of Gaucher disease type 1, a genetic lysosomal storage disorder.
  • Key Procedural History: The litigation was initiated under the Hatch-Waxman Act following Plaintiffs' receipt of a letter dated October 2, 2018, in which Defendants provided a Paragraph IV Certification for ANDA No. 212425. This certification alleged that U.S. Patent No. 7,196,205 is invalid and/or would not be infringed by the manufacture and sale of Defendants' proposed generic product. The patent is listed in the FDA's "Orange Book" for CERDELGA®.

Case Timeline

Date Event
2001-07-16 '205 Patent Priority Date
2007-03-27 '205 Patent Issue Date
2014-08-19 FDA approves New Drug Application for CERDELGA® (eliglustat)
2018-10-02 Plaintiffs receive Defendants' Paragraph IV notification letter
2018-11-14 Complaint Filing Date

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

U.S. Patent No. 7,196,205 - Synthesis of UDP-Glucose: N-Acylsphingosine Glucosyltransferase Inhibitors

The Invention Explained

  • Problem Addressed: The patent’s background section states that existing methods for synthesizing "amino ceramide-like compounds"—which are useful for treating diseases like Gaucher's—are not well-suited for industrial-scale manufacturing (’205 Patent, col. 2:2-5). It notes that prior methods either produce a mix of stereoisomers requiring costly and inefficient separation, or involve long, multi-step processes with expensive reagents (’205 Patent, col. 2:5-19).
  • The Patented Solution: The patent discloses what it describes as an "efficient, highly enantioselective synthesis of amino ceramide-like compounds" that reduces the number of steps and improves yield (’205 Patent, col. 2:27-34). The detailed description and figures outline a five-step method for producing specific enantiomers of ceramide-like compounds, which act as inhibitors of the GlcCer synthase enzyme (’205 Patent, col. 2:36-47; Fig. 1).
  • Technical Importance: The disclosed compounds are inhibitors of GlcCer synthase, an enzyme whose activity is linked to the accumulation of glycosphingolipids (GSLs) characteristic of diseases like Gaucher's disease, and the synthesis method provides an economical route to producing these therapeutic agents (’205 Patent, col. 1:40-44; col. 5:48-56).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 3-9 (Compl. ¶36).
  • Independent Claim 1 recites:
    • A compound represented by a specific structural formula, which corresponds to N-((1R,2R)-1-(2,3-dihydro-benzo[1,4]dioxin-6'-yl)-2-hydroxy-1-pyrrolidin-1-ylmethyl-ethyl)hexadecanamide (’205 Patent, col. 22:12-22).
    • or a physiologically acceptable salt thereof.
  • The complaint reserves the right to assert other claims, including dependent claims 3-9, which add limitations regarding the compound's enantiomeric excess (’205 Patent, col. 22:33-45; Compl. ¶36).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendants’ proposed generic drug product submitted to the FDA for approval under ANDA No. 212425 (Compl. ¶1).

Functionality and Market Context

The ANDA product is a generic version of CERDELGA® capsules (84 mg) for oral use (Compl. ¶1, 31). The active ingredient in the ANDA product is identified as eliglustat (Compl. ¶33). The complaint states that eliglustat is the active ingredient in CERDELGA®, which is a small molecule inhibitor of glucosylceramide synthase used for the long-term treatment of Gaucher disease type 1 (Compl. ¶17, 18). The complaint provides the chemical structure of eliglustat hemitartrate, the active ingredient in CERDELGA®. (Compl. p. 6). The chemical name provided for eliglustat is N-((1R,2R)-1-(2,3-dihydrobenzo[b][1,4]dioxin-6-yl)-1-hydroxy-3-(pyrrolidin-1-yl)propan-2-yl)octanamide, combined with a tartrate salt (Compl. ¶19).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed claim chart. The infringement theory is based on the allegation that Defendants' ANDA product contains eliglustat, and that eliglustat is a compound covered by the asserted claims of the ’205 patent (Compl. ¶22, 33, 36).

'205 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A compound represented by the structural formula for N-((1R,2R)-...)-hexadecanamide, or a physiologically acceptable salt thereof. The ANDA product contains the active ingredient eliglustat, which is an octanamide compound, or a salt thereof. The complaint alleges this compound is covered by the asserted claims. ¶1, 19, 33, 36 col. 22:12-22
  • Identified Points of Contention:
    • Scope Questions: A central issue for the court will be whether Claim 1, which explicitly recites a specific N-hexadecanamide compound (containing a 16-carbon acyl chain), can be read to cover the accused product containing eliglustat, an N-octanamide compound (containing an 8-carbon acyl chain).
    • Technical Questions: The infringement analysis will likely turn on whether the difference in the alkyl chain length between the claimed hexadecanamide and the accused octanamide is a legally material distinction. The complaint pleads infringement under the doctrine of equivalents, raising the question of whether eliglustat can be proven to be substantially the same as the claimed compound (Compl. ¶36).

V. Key Claim Terms for Construction

In this chemical case, the dispute is less about the definition of a text-based term and more about the scope of the claimed chemical structure.

  • The Term: The full chemical structure recited in Claim 1, specifically the N-hexadecanamide moiety.
  • Context and Importance: The scope of this claimed structure is the crux of the infringement dispute. The case will depend on whether Claim 1 is strictly limited to the exact molecule depicted—the hexadecanamide—or can be interpreted to cover the structurally similar but distinct octanamide (eliglustat) found in the accused product.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification discloses a genus of related compounds, including the specific structure for eliglustat (identified as "Compound 6," an octanamide) (’205 Patent, col. 18:48-51). The specification also describes a broader structural formula (XI) where the alkyl chain length is a variable "n," and a preferred range for "n" includes values that would correspond to both the claimed compound and eliglustat (’205 Patent, col. 12:32-36). Plaintiffs may argue that claiming one species should not be interpreted as a disavowal of another closely related, explicitly disclosed, and similarly functional species.
    • Evidence for a Narrower Interpretation: Claim 1 recites a single, specific chemical compound, not a genus of compounds. Defendants may argue that by choosing to claim one particular species (the hexadecanamide) while disclosing others (like the octanamide), the patentee dedicated the unclaimed subject matter to the public. The argument would be that the claim language itself is precise and unambiguous, limiting its scope to the exact molecule recited.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific allegations of indirect infringement (inducement or contributory infringement). The claims for relief are predicated on the act of filing the ANDA under 35 U.S.C. § 271(e)(2)(A) and the prospective commercialization of the generic product (Compl. ¶35, 43).
  • Willful Infringement: Willfulness is alleged based on Defendants' "actual knowledge of the '205 patent prior to submission of ANDA No. 212425," as evidenced by their Paragraph IV notification letter (Compl. ¶37). The complaint further alleges that Defendants had "no reasonable basis" for their assertions of non-infringement and invalidity, and that their statement of factual and legal bases for these opinions "lacks an objective good faith basis" (Compl. ¶37, 39).

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

  • A core issue will be one of claim scope: can Claim 1, which recites a specific N-hexadecanamide compound, be found to cover Defendants' proposed generic product, which contains the structurally distinct N-octanamide compound eliglustat?
  • A dispositive legal question will be the application of the doctrine of equivalents: does the difference in alkyl chain length between the claimed and accused compounds represent an insubstantial difference, or did the patentee, by claiming a single species from a disclosed genus, effectively surrender the right to capture other disclosed species like eliglustat?
  • A key evidentiary question may concern the significance of extrinsic evidence: specifically, what weight the court will assign to the patent's term extension certificate, which explicitly links the '205 patent to the FDA's regulatory review of eliglustat, when determining the scope of the patent's claims for the purpose of infringement.