DCT

1:19-cv-00658

Almirall LLC v. Amneal Pharma LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00658, D. Del., 04/09/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware limited liability company that conducts business in the state.
  • Core Dispute: This is a Hatch-Waxman action where Plaintiff alleges that Defendant's submission of an Abbreviated New Drug Application (ANDA) to market a generic version of Plaintiff's ACZONE® Gel, 7.5% constitutes an act of infringement of a patent covering the drug's formulation.
  • Technical Context: The technology concerns topical pharmaceutical formulations for treating common dermatological conditions like acne, a field with significant commercial value for both branded drug manufacturers and generic competitors.
  • Key Procedural History: The complaint was filed in response to Defendant's Paragraph IV certification, which asserts that the patent-in-suit is invalid or not infringed by its proposed generic product. Subsequent to the filing of this complaint, the U.S. Patent and Trademark Office instituted Inter Partes Review (IPR) proceedings against the patent-in-suit. These proceedings ultimately resulted in the cancellation of all asserted claims, a development that is dispositive for the litigation.

Case Timeline

Date Event
2012-11-20 '219 Patent Priority Date
2016-02-24 FDA Approval of Plaintiff's ACZONE® NDA
2016-12-13 '219 Patent Issue Date
2018-11-06 IPR2019-00207 Filed
2019-02-22 Defendant sends Paragraph IV Notice Letter
2019-04-09 Complaint Filing Date
2019-06-07 IPR2019-01095 Filed
2022-09-26 IPR Certificate Issued cancelling claims 1-8 of '219 Patent

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

U.S. Patent No. 9,517,219 - "Topical Dapsone and Dapsone/Adapalene Compositions and Methods for Use Thereof"

  • Patent Identification: U.S. Patent No. 9,517,219, “Topical Dapsone and Dapsone/Adapalene Compositions and Methods for Use Thereof,” issued December 13, 2016.

The Invention Explained

  • Problem Addressed: The patent’s background section describes challenges in creating effective topical compositions of the drug dapsone. While dapsone is an effective anti-inflammatory agent, topical formulations can dry out the skin. Adding typical moisturizers or emollients to counteract this effect can cause the dapsone to precipitate out of the composition, reducing its therapeutic availability and creating a "gritty" feel. (’219 Patent, col. 1:26-34, col. 2:55-61).
  • The Patented Solution: The invention claims to solve this problem by combining dapsone with two key components: a high concentration of diethylene glycol monoethyl ether, which acts as a solubilizer to keep the dapsone dissolved, and a specific "polymeric viscosity builder" (acrylamide/sodium acryloyldimethyltaurate copolymer). This combination is described as creating a stable composition that allows for a high concentration of dapsone, optimizes its delivery into the skin, and minimizes undesirable yellowing or precipitation. (’219 Patent, Abstract; col. 2:45-61).
  • Technical Importance: This formulation strategy aims to produce a more potent, stable, and aesthetically acceptable topical dapsone product, which could improve patient compliance and treatment outcomes for skin conditions like acne. (’219 Patent, col. 2:45-54).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 6.
  • Independent Claim 1 recites a method for treating acne vulgaris or rosacea by administering a topical composition comprising:
    • about 7.5% w/w dapsone;
    • about 30% w/w to about 40% w/w diethylene glycol monoethyl ether;
    • about 2% w/w to about 6% w/w of a polymeric viscosity builder comprising acrylamide/sodium acryloyldimethyl taurate copolymer;
    • water; and
    • wherein the composition does not contain adapalene.
  • Independent Claim 6 is similar to claim 1, but recites narrower concentrations for the solubilizer ("about 30% w/w") and the polymeric viscosity builder ("about 4% w/w").
  • The complaint asserts infringement of claims 1-8, thereby reserving the right to assert the dependent claims. (Compl. ¶¶23-25).

III. The Accused Instrumentality

  • Product Identification: Defendant’s proposed generic dapsone gel, 7.5% drug product, as detailed in its Abbreviated New Drug Application (ANDA) No. 212701 submitted to the FDA. (Compl. ¶1).
  • Functionality and Market Context: The ANDA product is a proposed generic version of Plaintiff’s ACZONE® Gel, 7.5%, and the complaint alleges it is intended for the same use: the treatment of acne vulgaris. (Compl. ¶¶1, 10). As a generic, the ANDA product's formulation is alleged to be bioequivalent to the branded product. (Compl. ¶14). The filing of the ANDA is the statutory act of infringement under the Hatch-Waxman Act, triggering this lawsuit. (Compl. ¶22).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

  • '219 Patent Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for treating a dermatological condition selected from the group consisting of acne vulgaris and rosacea... The ANDA seeks approval for a product to be used in treating acne vulgaris, thereby infringing the claimed method. ¶1, ¶10 col. 15:40-16:2
about 7.5% w/w dapsone; The ANDA product is identified as a "dapsone gel, 7.5% drug product." ¶1 col. 15:5-6
about 30% w/w to about 40% w/w diethylene glycol monoethyl ether; The complaint alleges that the filing of the ANDA, which specifies the product's formulation, constitutes infringement, implying the formulation meets this limitation. ¶22 col. 15:6-8
about 2% w/w to about 6% w/w of a polymeric viscosity builder comprising acrylamide/sodium acryloyldimethyl taurate copolymer; The complaint’s infringement allegation is based on the formulation described in the ANDA, which is asserted to contain the claimed builder in the specified range. ¶22 col. 15:8-11
wherein the topical pharmaceutical composition does not comprise adapalene. The accused ANDA product is for a generic dapsone gel, not a combination product containing adapalene. ¶1 col. 15:12-13
  • Identified Points of Contention:
    • Technical Question: As this is an ANDA case, the central factual question is whether the precise formulation disclosed in Defendant’s confidential ANDA submission contains each of the claimed ingredients within the specified weight-by-weight percentage ranges.
    • Scope Question: A likely point of contention would be the interpretation of the term "about," which modifies all concentration limitations. The extent to which "about 7.5%" can encompass formulations that are not exactly 7.5% would be a critical issue for determining literal infringement.

V. Key Claim Terms for Construction

  • The Term: "about"
  • Context and Importance: This term is used to qualify every concentration recited in the independent claims. Its construction is critical because it defines the boundaries of the claimed formulation. Whether the Defendant's ANDA product, which may have concentrations that vary slightly from the recited numbers, infringes will depend heavily on the scope afforded to this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification frequently uses "about" when discussing concentration ranges, such as "about 5% w/w to about 10% w/w dapsone," suggesting the inventors intended the claims to cover a range of values around the recited numbers, not just the exact figures. (’219 Patent, col. 5:40-42).
    • Evidence for a Narrower Interpretation: The patent includes tables with specific formulation examples that list exact percentages without the "about" qualifier (e.g., "Dapsone 7.5" in Table 1). A party could argue these examples demonstrate that the inventors were capable of being precise and that "about" should be construed narrowly to cover only minor measurement variability. (’219 Patent, col. 10:66).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that upon FDA approval, Defendant will induce infringement by marketing the ANDA product and including a product label and instructions that direct medical professionals and patients to administer the drug in a manner that practices the claimed method. (Compl. ¶24).
  • Willful Infringement: The complaint does not use the word "willful" but does allege that Defendant had knowledge of the '219 Patent, at the latest, by the time it sent its Paragraph IV certification letter. (Compl. ¶¶16-17, 24). It further requests a finding that the case is "exceptional" to warrant an award of attorneys' fees under 35 U.S.C. § 285. (Compl. ¶28).

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

At the time of its filing, this case presented standard questions for Hatch-Waxman litigation. However, subsequent procedural developments have rendered these initial questions moot.

  1. A primary question at filing would have been one of factual correspondence and claim scope: Does the specific formulation in Defendant's ANDA fall within the claimed percentage ranges of the '219 patent, especially considering the legal construction of the term "about"?

  2. A second, and equally critical, question would have been patent validity: Could the Defendant prove by clear and convincing evidence that the claimed composition was obvious or anticipated by prior art pharmaceutical formulations?

These questions are now superseded by the outcome of the Inter Partes Review proceedings. The central issue for the litigation became the administrative cancellation of the patent claims. The final decision from the USPTO to cancel all asserted claims (1-8) of the '219 patent effectively invalidates the property right being asserted, making it impossible for the Plaintiff to sustain its infringement action.