DCT

1:25-cv-00814

Azurity Pharma Inc v. Saba Ilac Sanayi Ve Ticaret As

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00814, D. Del., 07/02/2025
  • Venue Allegations: Venue is asserted based on Defendant's alleged intent to market, sell, and distribute its generic drug product in Delaware.
  • Core Dispute: Plaintiffs allege that Defendant’s Abbreviated New Drug Application (ANDA) to market a generic version of the hypertension drug EDARBYCLOR® constitutes an act of infringement of three U.S. patents covering pharmaceutical formulations and methods of use.
  • Technical Context: The technology relates to pharmaceutical compositions for treating hypertension, focusing on stabilizing the active ingredient azilsartan medoxomil, both alone and in combination with the diuretic chlorthalidone.
  • Key Procedural History: This is a Hatch-Waxman action initiated in response to Defendant’s ANDA filing. The complaint was filed within the 45-day statutory window after Plaintiffs received Defendant’s notice letter. The complaint notes a prior patent dispute between the parties involving a different generic product and alleges that Defendant has refused to provide access to its ANDA information under reasonable confidentiality terms, suggesting this complaint was filed without Plaintiffs having reviewed the technical details of the accused product's formulation.

Case Timeline

Date Event
2007-03-28 Earliest Priority Date ('’936 Patent)
2008-07-31 Earliest Priority Date ('’238 Patent)
2008-12-23 Earliest Priority Date ('’249 Patent)
2015-06-30 Issue Date (U.S. Patent No. 9,066,936)
2015-10-27 Issue Date (U.S. Patent No. 9,169,238)
2016-07-12 Issue Date (U.S. Patent No. 9,387,249)
2025-05-20 Defendant's ANDA Notice Letter Received by Plaintiffs
2025-07-02 Complaint Filing Date

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

U.S. Patent No. 9,066,936 - "Solid Pharmaceutical Composition Comprising a Benzimidazole-7-Carboxylate Derivative and a pH Control Agent"

The Invention Explained

  • Problem Addressed: The patent addresses a common formulation challenge where an active pharmaceutical ingredient, referred to as compound (I), is unstable at the neutral pH typically used for producing pharmaceutical preparations. However, at the more acidic pH range where the compound is stable, its solubility is low, which can hinder its dissolution and effectiveness. (’936 Patent, col. 2:7-15).
  • The Patented Solution: The invention introduces a "pH control agent" into the solid pharmaceutical composition. This agent is designed to adjust the pH of the solid preparation itself to a range where the active ingredient is stable (e.g., pH 3 to 5), which unexpectedly was found to improve not only the stability of the compound but also its dissolution properties from the tablet. (’936 Patent, col. 2:26-34).
  • Technical Importance: This technology provided a method to create a stable and effective oral dosage form for a promising new angiotensin II receptor antagonist, overcoming conflicting requirements of stability and solubility.

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims; the core technology is captured in independent claim 1 (Compl. ¶38-45).
  • Essential elements of Independent Claim 1:
    • A solid pharmaceutical composition comprising a specific compound, (5-methyl-2-oxo-1,3-dioxol-4-yl)methyl 2-ethoxy-1-{[2'-(5-oxo-4,5-dihydro-1,2,4-oxadiazol-3-yl)biphenyl-4-yl]methyl}-1H-benzimidazole-7-carboxylate potassium salt (azilsartan medoxomil potassium).
    • The composition also comprises a solid pH control agent.
    • The pH control agent provides a pH of 3 to 5 when dissolved or suspended in water at a concentration of 1% w/v at 25° C.

U.S. Patent No. 9,169,238 - "Solid Pharmaceutical Composition"

The Invention Explained

  • Problem Addressed: The patent extends the stability-versus-solubility problem to a fixed-dose combination product containing both the angiotensin II receptor blocker (compound I) and a diuretic. Because the two active ingredients have different chemical properties, formulating them together into a single, stable, and effective preparation presents significant technical difficulties. (’238 Patent, col. 2:11-17).
  • The Patented Solution: The invention teaches a solid preparation with two distinct parts, achieved through separate granulation. The first part contains the angiotensin II receptor blocker and a pH control agent. The second part contains the diuretic. By granulating these parts separately, the invention aims to prevent undesirable interactions between the active ingredients and their respective excipients, thereby stabilizing the entire composition. (’238 Patent, col. 2:54-68; col. 3:45-67).
  • Technical Importance: This approach enabled the development of a stable fixed-dose combination therapy, which can improve patient convenience and compliance in managing hypertension.

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims; the core technology is captured in independent claim 1 (Compl. ¶46-53).
  • Essential elements of Independent Claim 1:
    • A solid preparation comprising a first part and a second part.
    • The first part comprises azilsartan medoxomil potassium and a pH control agent.
    • The second part comprises the diuretic chlorthalidone.
    • The second part is obtained by "granulating separately from the first part."
    • The pH control agent provides a pH of 2 to 5 when tested under specific conditions.

U.S. Patent No. 9,387,249 - "Methods of Treating Hypertension with at Least One Angiotensin II Receptor Blocker and Chlorthalidone"

The Invention Explained

  • This patent claims a method of treating hypertension by administering specific daily doses of an angiotensin II receptor blocker (azilsartan medoxomil) in combination with specific daily doses of the diuretic chlorthalidone (’249 Patent, Abstract). A key aspect of the invention is the claimed additional benefit of reducing the incidence of hypokalemia (low potassium levels), a known side effect of diuretics, when compared to administering chlorthalidone alone (’249 Patent, Claim 1).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims; the core invention is in independent claim 1 (Compl. ¶54-62).
  • The complaint alleges that the proposed labeling for Defendant's ANDA product will instruct physicians and patients to use the product in a manner that directly infringes the claimed method, including the specified dosages (Compl. ¶56).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant’s proposed generic oral tablets containing either 40 mg azilsartan medoxomil and 12.5 mg chlorthalidone, or 40 mg azilsartan medoxomil and 25 mg chlorthalidone, which are the subject of ANDA No. 217111 (Compl. ¶24).

Functionality and Market Context

  • The complaint alleges that the ANDA Products contain the same active ingredients as Plaintiffs’ brand-name drug EDARBYCLOR® and are intended for the same therapeutic use of treating hypertension (Compl. ¶22, ¶25). As the complaint was filed without access to the ANDA, it provides no specific details on the formulation or manufacturing process of the accused generic product, instead relying on the belief that the ANDA product will be a bioequivalent version of EDARBYCLOR® (Compl. ¶25, ¶35).
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide specific, factual infringement allegations, as Plaintiffs allegedly have not been given access to the confidential details of Defendant's ANDA (Compl. ¶35). The infringement counts are pleaded on information and belief, based on the assumption that for Defendant's product to be approved as a generic equivalent of EDARBYCLOR®, it must necessarily meet the limitations of the asserted patent claims.

  • ’936 Patent Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A solid pharmaceutical composition comprising a compound which is (5-methyl-2-oxo...potassium salt... Defendant's ANDA Products are solid oral tablets containing azilsartan medoxomil potassium as an active ingredient. ¶24, ¶40 col. 21:13-20
...and a solid pH control agent... On information and belief, Defendant’s ANDA Products contain a pH control agent to ensure the stability and dissolution properties necessary for bioequivalence with EDARBYCLOR®. ¶40, ¶43 col. 21:20-21
...which provides a pH of 3 to 5 when dissolved or suspended in water at a concentration of 1% w/v at 25° C. On information and belief, the pH control agent in the ANDA Products will create the claimed pH environment. ¶40, ¶43 col. 21:21-24
  • ’238 Patent Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A solid preparation comprising a first part... and a second part... On information and belief, Defendant's ANDA Products are formulated with distinct components corresponding to the claimed first and second parts. ¶48, ¶51 col. 33:1-4
...a first part comprising a compound which is (5-methyl-2-oxo...potassium salt) and a pH control agent... On information and belief, a first part of the ANDA Products contains azilsartan medoxomil potassium and a pH control agent to ensure stability. ¶48, ¶51 col. 33:1-4
...and a second part comprising chlorthalidone... Defendant's ANDA Products contain chlorthalidone as an active ingredient. ¶24, ¶48 col. 33:4-6
...which is obtained by granulating separately from the first part... On information and belief, to be bioequivalent to EDARBYCLOR®, the ANDA Products must be manufactured using a separate granulation process as claimed to prevent degradation. ¶48, ¶51 col. 33:6-8
  • Identified Points of Contention:
    • Factual Questions: The central dispute for the '936 and '238 patents will be factual and subject to discovery. Key questions include: Does the Defendant's formulation actually contain a "pH control agent" as claimed, or does it achieve stability through other means? Does the Defendant's manufacturing process involve "granulating separately," or does it use a different method that might fall outside the claim scope?
    • Scope Questions: For the '249 patent, a key issue may be whether the final approved label for the generic product will induce infringement of the method claim. This raises the question of whether Defendant can and will "carve out" the patented method of use from its label to avoid infringement.

V. Key Claim Terms for Construction

  • The Term: "pH control agent" (’936 Patent, Claim 1; ’238 Patent, Claim 1)

  • Context and Importance: This term is fundamental to the composition claims of both the '936 and '238 patents. Infringement hinges on whether an excipient in the Defendant’s product meets this definition. Practitioners may focus on this term because Defendant could argue that its excipients are standard fillers or buffers that incidentally affect pH, rather than being an agent added for the specific purpose taught in the patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification provides a long list of substances that can function as a pH control agent, including common acidic substances, basic substances, and their salts, suggesting the term could encompass a wide range of excipients (’936 Patent, col. 5:4-13; col. 5:26-34).
    • Evidence for a Narrower Interpretation: The patent repeatedly ties the "pH control agent" to the function of simultaneously improving stability and dissolution (’936 Patent, col. 5:63-66). A party could argue the term is limited to agents selected and used for this specific, dual purpose, and not merely any substance that alters pH. The claim also functionally limits the agent to one that "provides a pH of 3 to 5."

  • The Term: "granulating separately" (’238 Patent, Claim 1)

  • Context and Importance: This manufacturing step is a critical limitation in the '238 patent. The infringement analysis will depend on whether Defendant’s manufacturing process falls within the scope of this term.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term itself, given its plain and ordinary meaning, could be argued to cover any process where the granulations of the two "parts" (the ARB/pH agent and the diuretic) are performed as distinct, non-concurrent steps before being combined into a final dosage form.
    • Evidence for a Narrower Interpretation: The specification describes embodiments such as multi-layer tablets or coated tablets where the "parts" are physically distinct layers (’238 Patent, col. 3:1-4; col. 8:3-10). Defendant may argue that the term should be limited to these specific structures, and that a simpler process, such as dry-blending two different sets of pre-made granules, does not constitute "granulating separately" to form a single "solid preparation" as envisioned by the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant will induce infringement of all three patents. For the composition patents ('936 and '238), this is based on the product being used as a pharmaceutical. For the method patent ('249), this is based on the allegation that the ANDA product's proposed labeling will instruct physicians and patients to administer the drug in a manner that practices the claimed method (Compl. ¶40, ¶48, ¶56).
  • Willful Infringement: The complaint does not contain an explicit count for willful infringement. However, it alleges that Defendant had "actual and constructive knowledge" of the patents prior to filing its ANDA and possessed "specific intent to infringe," which lays the groundwork for a future willfulness claim (Compl. ¶41-42, ¶49-50, ¶57-58).

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

  • A primary issue will be one of evidentiary proof: As the complaint was filed without access to Defendant's ANDA, the case will turn on whether discovery reveals that the accused generic product's formulation and manufacturing process align with the specific claim limitations of the '936 and '238 patents, particularly regarding the presence of a "pH control agent" and the use of "separate granulation."
  • A key legal and factual question will be one of induced infringement: For the '249 method-of-use patent, can Plaintiffs demonstrate that the Defendant's proposed product label will inevitably encourage or instruct infringement of the claimed method, and can Defendant successfully argue that it has "carved out" the patented indication or that the claimed therapeutic benefit of "reducing hypokalemia" is not met by its product?