DCT

1:24-cv-00571

Breckenridge Pharmaceutical Inc v. Hetero USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00571, D. Del., 05/10/2024
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware based on certain Defendants being incorporated in Delaware, transacting business in the state, and having previously consented to venue in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ generic dabigatran etexilate capsule products infringe patents directed to pharmaceutical compositions of dabigatran etexilate and methods of their use.
  • Technical Context: The patents relate to pharmaceutical formulations for the anticoagulant drug dabigatran etexilate, a compound known to be susceptible to degradation and to have low bioavailability.
  • Key Procedural History: The complaint alleges Plaintiff sent letters notifying Defendant Hetero of the '729 Patent in April 2022 and of both the '729 and '142 Patents in October 2023. U.S. Patent No. 11,752,142 is subject to a terminal disclaimer, linking its enforceability and term to its parent, U.S. Patent No. 11,013,729.

Case Timeline

Date Event
2012-02-21 Priority Date ('729 and '142 Patents)
2021-05-25 '729 Patent Issue Date
2022-04-08 First pre-suit notice letter sent by Plaintiff to Defendant
2022-09-XX Accused Products first marketed (alleged "on or about early September of 2022")
2023-09-12 '142 Patent Issue Date
2023-10-23 Second pre-suit notice letter sent by Plaintiff to Defendant
2024-05-10 Complaint Filing Date

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

U.S. Patent No. 11,013,729, "Oral Pharmaceutical Compositions of Dabigatran Etexilate," issued May 25, 2021

The Invention Explained

  • Problem Addressed: The patent’s background describes dabigatran etexilate mesylate (DEM) as a drug with poor aqueous solubility and low bioavailability (3-7%) that is highly sensitive to degradation from moisture and acid ('729 Patent, col. 2:15-25). Prior art attempts to create stable, effective oral formulations, such as layered pellets, were described as "cumbersome, time consuming and uneconomical," while simpler tablet forms that combined the drug and an organic acid were noted to be "highly susceptible to hydrolysis" ('729 Patent, col. 2:40-53).
  • The Patented Solution: The invention claims to solve this stability-versus-bioavailability trade-off by creating a composition from a mixture of two physically distinct particle populations ('729 Patent, col. 2:62-65). The first particle type contains the active drug (dabigatran etexilate) but is free from acids, while the second particle type contains a pharmaceutically acceptable organic acid (such as tartaric acid) but is free from the drug ('729 Patent, col. 3:30-33, 3:60-65). Crucially, the acid-containing particles are coated with a protective layer to prevent premature interaction with the drug particles, thereby aiming to enhance stability during storage and allow for targeted release in the gastrointestinal tract ('729 Patent, col. 5:30-42).
  • Technical Importance: This two-particle mixture approach represents a strategy to create a stable and effective oral dosage form for a sensitive drug, potentially offering a more streamlined and cost-effective manufacturing process compared to complex multi-layered pellet technologies ('729 Patent, col. 2:56-61).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 11, and 16 (Compl. ¶55).
  • Independent Claim 1 recites:
    • A composition comprising a mixture of at least two distinct types of particles, where
    • the first type of particles comprises dabigatran etexilate and is "free from organic acids and inorganic acids"; and
    • the second type of particles comprises at least one pharmaceutically acceptable organic acid, is "coated with a protective coating layer," and is "free from dabigatran etexilate."

U.S. Patent No. 11,752,142, "Oral Pharmaceutical Compositions of Dabigatran Etexilate," issued September 12, 2023

The Invention Explained

  • Problem Addressed: The '142 Patent shares a common specification with the '729 Patent and thus addresses the same technical challenges of formulating the acid- and moisture-sensitive dabigatran etexilate drug ('142 Patent, col. 1:11 - col. 2:65).
  • The Patented Solution: Rather than claiming the composition itself, this patent claims methods of using the specific two-particle formulation described in the '729 Patent. The invention is the act of administering this composition to a patient for specific therapeutic purposes, such as "reducing the risk of stroke and systemic embolism in patients with non-valvular atrial fibrillation" ('142 Patent, col. 16:9-12) or "treating venous thromboembolic events" ('142 Patent, col. 16:47-52).
  • Technical Importance: By claiming methods of use, the patent seeks to protect the approved medical applications of the specific formulation, extending patent coverage from the product's structure to its therapeutic administration.

Key Claims at a Glance

  • The complaint asserts independent claims 1, 8, and 16 (Compl. ¶¶72, 77-78).
  • Independent Claim 1 recites:
    • A method for reducing the risk of stroke and systemic embolism in patients with non-valvular atrial fibrillation,
    • comprising administering to the patient a composition that includes the same two-particle system recited in claim 1 of the '729 Patent: one particle type with dabigatran etexilate (free from acids) and a second, separate particle type with a coated organic acid (free from dabigatran etexilate).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendants' "Dabigatran Products," identified as 75 mg and 150 mg dabigatran etexilate mesylate capsules (Compl. ¶3).

Functionality and Market Context

The complaint alleges these products are oral capsules containing a specific formulation intended for anticoagulant therapy (Compl. ¶¶3, 41). The complaint asserts that the products contain a first particle type with dabigatran etexilate mesylate that is free from acids, and a second, distinct particle type containing tartaric acid that is coated with a protective layer and is free from the drug (Compl. ¶¶38-40). The products are alleged to be AB-rated generic drugs, bioequivalent to the brand-name drug Pradaxa®, and to have been first marketed in the U.S. "on or about early September of 2022" (Compl. ¶37). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'729 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a mixture of at least two distinct types of particles The complaint alleges the accused products comprise a mixture of two distinct particle types. ¶32 col. 2:62-64
wherein a) the first type of particles comprise dabigatran etexilate... wherein the first type of particles is free from organic acids and inorganic acids The accused products are alleged to "contain a first type of particles that comprise dabigatran etexilate mesylate and is free from organic and inorganic acids." ¶38 col. 3:30-33
and b) the second type of particles comprise at least one pharmaceutically acceptable organic acid The accused products are alleged to "contain a second type of particles that comprise tartaric acid (a pharmaceutically acceptable organic acid)." ¶39 col. 5:9-10
wherein the second type of particles is coated with a protective coating layer The complaint alleges that the "second type of particles in Hetero’s Dabigatran Products is coated with a protective coating." ¶40 col. 5:30-37
and is free from dabigatran etexilate The complaint alleges the second particle type in the accused products "is free from dabigatran etexilate." ¶39 col. 3:63-65

'142 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for reducing the risk of stroke and systemic embolism in patients with non-valvular atrial fibrillation comprising administering to the patient in need thereof a composition The complaint alleges that Defendants' FDA-approved label and Medication Guide instruct physicians and patients to administer the accused product for this specific indication. ¶¶64, 65 col. 11:4-11
[Composition comprising a mixture of two distinct, separated, and coated particle types as described above] The complaint alleges that the accused product being administered is the claimed composition, based on the same allegations cited for the '729 Patent. ¶¶38-40 col. 3:26-45
  • Identified Points of Contention:
    • Factual Question: A primary point of contention will be whether the accused products are, in fact, formulated as a physical mixture of two distinct particle populations as alleged in the complaint and required by the claims. This is a factual question that will depend on evidence from discovery, including product testing and analysis of Defendants' manufacturing processes.
    • Scope Question: The analysis may turn on whether the coating on the defendants' tartaric acid particles meets the claim limitation of a "protective coating layer." The parties may dispute the structural and functional properties required to satisfy this term.

V. Key Claim Terms for Construction

  • The Term: "free from"

  • Context and Importance: This term appears twice in the independent claims, requiring the drug particles to be "free from" acids and the acid particles to be "free from" the drug. Its definition is critical because manufacturing processes can result in trace impurities. Whether this term means an absolute absence (0.00%) or permits a functionally insignificant amount will be central to the infringement analysis.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent specification does not provide a quantitative definition or threshold for "free from." A party could argue that in the absence of such a definition, the term should be given its plain meaning, which may tolerate de minimis or trace amounts that do not frustrate the purpose of the invention (i.e., preventing degradation).
    • Evidence for a Narrower Interpretation: The patent’s background repeatedly emphasizes the drug's high sensitivity to acid and the need for separation to achieve stability ('142 Patent, col. 2:25, 2:50-53). A party may argue that this context requires a strict interpretation, meaning containing no more than a negligible or undetectable amount of the specified substance. The patent’s description of the "first type of particles...is free from acids and the second type of particles...is free from dabigatran etexilate" ('142 Patent, col. 5:1-5) uses absolute language that could support this view.

  • The Term: "protective coating layer"

  • Context and Importance: The function of this layer is to physically separate the organic acid from the dabigatran etexilate until administration. Practitioners may focus on this term because the nature, thickness, and integrity of this coating will be a key technical issue in determining infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification discloses a wide variety of materials for the coating, including numerous cellulose derivatives, vinyl derivatives, and waxes ('142 Patent, col. 5:50-65, col. 6:1-51). This broad disclosure could support an interpretation where the term is defined functionally (i.e., any layer that effectively separates the components) rather than by a specific structure or material.
    • Evidence for a Narrower Interpretation: A party could argue the term requires a layer that meets a specific functional standard, such as being substantially impermeable for a certain period under specific conditions. The stated purpose "to avoid direct contact of the particle core with its environment" ('142 Patent, col. 5:43-45) could be used to argue for a non-trivial level of protection that must be proven.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement (§ 271(b)) and contributory infringement (§ 271(c)) of the '142 Patent. The allegations are based on Defendants marketing and selling the accused products with an FDA-approved label and Medication Guide, which allegedly instruct and encourage physicians and patients to perform the patented methods of treatment (Compl. ¶¶63-67, 73). The complaint further alleges the product is not a staple article of commerce and is specially made for these infringing uses (Compl. ¶¶75, 77).
  • Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge of the patents. It specifically cites notice letters sent to Hetero on April 8, 2022 (regarding the '729 Patent) and October 23, 2023 (regarding both patents), as well as an alleged acknowledgment of receipt from Hetero (Compl. ¶¶43-47, 51).

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

  • A central evidentiary question will be one of compositional identity: Will discovery and expert analysis confirm the complaint's allegation that the accused generic product is formulated as a physical mixture of two distinct, separately-coated particle populations as required by the patent claims, or does it utilize a different formulation that falls outside the claim scope?
  • The case will likely involve a key question of claim construction: How much compositional crossover is permissible under the term "free from," and what specific functional or structural characteristics are required for a coating to be considered a "protective coating layer"? The court's interpretation of these terms may be dispositive of infringement.
  • For the method claims of the '142 Patent, a primary issue will be inducement: Does the act of marketing a generic drug with an FDA-approved label that mirrors the brand-name indications provide sufficient evidence of the specific intent required to find Defendants liable for inducing infringement by doctors and patients?