DCT

1:25-cv-00825

Orion Corp v. Alembic Pharma Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00825, D. Del., 07/03/2025
  • Venue Allegations: Venue is asserted based on Defendant Alembic Pharmaceuticals, Inc. being a Delaware corporation and both defendants allegedly conducting business in and having substantial contacts with the state.
  • Core Dispute: Plaintiffs allege that Defendant’s Abbreviated New Drug Application (ANDA) to market a generic version of the prostate cancer drug Nubeqa® constitutes an act of infringement of four patents covering specific crystalline forms, pharmaceutical formulations, and particle characteristics of the active ingredient, darolutamide.
  • Technical Context: The technology concerns pharmaceutical chemistry, specifically the identification and control of stable crystalline polymorphs and particle properties of an active pharmaceutical ingredient to ensure consistent manufacturing, stability, and bioavailability.
  • Key Procedural History: The lawsuit is a Hatch-Waxman action triggered by Defendant's filing of ANDA No. 220499 with a Paragraph IV certification, asserting the patents-in-suit are invalid, unenforceable, or will not be infringed. The complaint was filed within the 45-day statutory window following Plaintiffs' receipt of Defendant's notice letter. The '853 and '515 patents are continuations of the application that led to the '530 patent, creating a family of related intellectual property.

Case Timeline

Date Event
2015-01-30 Earliest Priority Date for '530, '853, and '515 Patents
2017-03-07 Priority Date for '058 Patent
2018-07-03 '530 Patent Issued
2019-08-20 '853 Patent Issued
2020-11-17 '515 Patent Issued
2021-11-09 '058 Patent Issued
2025-05-20 Alembic's Notice Letter Sent to Plaintiffs
2025-07-03 Complaint Filed

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

U.S. Patent No. 10,010,530 - "Carboxamide Derivative and Its Diastereomers in Stable Crystalline Form"

  • Patent Identification: U.S. Patent No. 10,010,530, titled "Carboxamide Derivative and Its Diastereomers in Stable Crystalline Form," issued July 3, 2018 (Compl. ¶23).

The Invention Explained

  • Problem Addressed: The patent implicitly addresses the common challenge in pharmaceutical development where an active pharmaceutical ingredient can exist in multiple crystalline forms (polymorphs) or as an unstable amorphous solid. The summary of the invention notes that it has "now been found" that the compound can be obtained in a "stable and substantially pure crystalline form" ('530 Patent, col. 2:40-44).
  • The Patented Solution: The invention is a specific, stable crystalline form of the compound darolutamide, designated "crystalline form I." This form is identified by a unique fingerprint of characteristic peaks when analyzed by X-ray powder diffraction (XRPD) ('530 Patent, col. 3:27-34). The specification explains that such stable forms are "particularly suitable in the preparation of pharmaceutical formulations" ('530 Patent, col. 3:8-10).
  • Technical Importance: Achieving a single, stable crystalline form is critical for drug manufacturing, as it ensures consistent dissolution rates, bioavailability, and shelf-life, which are fundamental to a drug's safety and efficacy profile ('530 Patent, col. 3:6-10).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶54).
  • Essential elements of Claim 1:
    • Crystalline form I of N—((S)-1-(3-(3-chloro-4-cyanophenyl)-1H-pyrazol-1-yl) propan-2-yl)-5-(1-hydroxyethyl)-1H-pyrazole-3-carboxamide (I)
    • having an X-ray powder diffraction pattern comprising characteristic peaks at about 8.5, 10.4, 16.6, 16.9, and 24.3 degrees 2-theta (Compl. ¶26).

U.S. Patent No. 10,383,853 - "Carboxamide Derivative and Its Diastereomers in Stable Crystalline Form"

  • Patent Identification: U.S. Patent No. 10,383,853, titled "Carboxamide Derivative and Its Diastereomers in Stable Crystalline Form," issued August 20, 2019 (Compl. ¶28).

The Invention Explained

  • Problem Addressed: As a continuation of the application for the '530 Patent, this patent addresses the same need for a stable and pure crystalline form of darolutamide suitable for pharmaceutical use ('853 Patent, col. 2:40-44).
  • The Patented Solution: The '853 Patent claims the same "crystalline form I" identified in the '530 Patent but adds a negative limitation requiring that the crystalline form be "substantially free of any other crystalline form" of the compound ('853 Patent, col. 2:60-67). This element focuses the invention on the polymorphic purity of the drug substance.
  • Technical Importance: Ensuring high polymorphic purity prevents the drug from converting to other, potentially less stable or less soluble, crystalline forms during storage or processing, which could negatively impact the drug's performance and regulatory compliance ('853 Patent, col. 3:6-10).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶63).
  • Essential elements of Claim 1:
    • Crystalline form I of N—((S)-1-(3-(3-chloro-4-cyanophenyl)-1H-pyrazol-1-yl)propan-2-yl)-5-(1-hydroxyethyl)-1H-pyrazole-3-carboxamide (I) having an X-ray powder diffraction pattern comprising characteristic peaks at about 8.5, 10.4, 16.6, and 24.3 degrees 2-theta,
    • wherein the crystalline form I is substantially free of any other crystalline form of N—((S)-1-(3-(3-chloro-4-cyanophenyl)-1H-pyrazol-1-yl)propan-2-yl)-5-(1-hydroxyethyl)-1H-pyrazole-3-carboxamide (I) (Compl. ¶31).

U.S. Patent No. 10,835,515 - "Carboxamide Derivative and Its Diastereomers in Stable Crystalline Form"

  • Patent Identification: U.S. Patent No. 10,835,515, titled "Carboxamide Derivative and Its Diastereomers in Stable Crystalline Form," issued November 17, 2020 (Compl. ¶33).
  • Technology Synopsis: This patent claims a finished pharmaceutical product, not just the active ingredient. It covers a pharmaceutical dosage form, specifically a tablet or capsule, that comprises the previously defined "crystalline form I" of darolutamide together with a pharmaceutical excipient ('515 Patent, Claim 1).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶72).
  • Accused Features: The accused ANDA product is a tablet dosage form that allegedly contains the claimed crystalline form I of darolutamide (Compl. ¶¶ 47, 72).

U.S. Patent No. 11,168,058 - "Manufacture of a Crystalline Pharmaceutical Product"

  • Patent Identification: U.S. Patent No. 11,168,058, titled "Manufacture of a Crystalline Pharmaceutical Product," issued November 9, 2021 (Compl. ¶38).
  • Technology Synopsis: This patent addresses manufacturing challenges associated with darolutamide particles, such as poor flowability and cumbersome isolation caused by small, irregular particles with 'sharp edges' produced by prior methods ('058 Patent, col. 1:63-col. 2:4). The invention covers crystalline particles of darolutamide with specific physical properties, such as a defined specific surface area (SSA) or a combination of a "rounded particle shape" and a large volume median diameter, which are designed to improve pharmaceutical processing ('058 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 10 are asserted (Compl. ¶81).
  • Accused Features: The complaint alleges that the crystalline particles within Alembic's proposed generic product possess the specific surface area, rounded shape, and/or volume median diameter recited in the claims (Compl. ¶81).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is "Alembic's ANDA Product," a proposed generic version of Plaintiffs' Nubeqa® (darolutamide) tablets, as described in Abbreviated New Drug Application (ANDA) No. 220499 (Compl. ¶1).

Functionality and Market Context

  • The product is described as a 300 mg tablet for oral administration (Compl. ¶¶ 47-48). As a generic version of Nubeqa®, it is intended to be a therapeutic equivalent for the treatment of prostate cancer (Compl. ¶1, ¶46).
  • The complaint alleges that the purpose of Alembic's ANDA filing is to obtain FDA approval for the commercial manufacture and sale of this generic product in the United States before the expiration of the patents-in-suit (Compl. ¶44). The specific technical details of the product are not public, as the ANDA itself is confidential (Compl. ¶¶ 49-50).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed, element-by-element infringement analysis or a claim chart. The infringement allegations are made "on information and belief" and are based on the contents of Alembic's confidential ANDA and associated Notice Letter. The complaint states that Alembic did not contest infringement of the '530, '853, and '515 patents in its letter (Compl. ¶¶ 54, 65, 74).

No probative visual evidence provided in complaint.

10,010,530 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
Crystalline form I of N—((S)-1-(3-(3-chloro-4-cyanophenyl)-1H-pyrazol-1-yl) propan-2-yl)-5-(1-hydroxyethyl)-1H-pyrazole-3-carboxamide (I) The complaint alleges that the active pharmaceutical ingredient (API) in Alembic's ANDA Product is this specific compound, darolutamide. ¶¶ 1, 46 col. 1:24-33
having an X-ray powder diffraction pattern comprising characteristic peaks at about 8.5, 10.4, 16.6, 16.9, and 24.3 degrees 2-theta. It is alleged that the API in the ANDA Product exists in "Crystalline form I," which is defined by these characteristic XRPD peaks. The complaint notes that Alembic did not contest infringement of this claim. ¶54 col. 3:27-34

10,383,853 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
Crystalline form I of N—((S)-1-(3-(3-chloro-4-cyanophenyl)-1H-pyrazol-1-yl)propan-2-yl)-5-(1-hydroxyethyl)-1H-pyrazole-3-carboxamide (I) having an X-ray powder diffraction pattern comprising characteristic peaks at about 8.5, 10.4, 16.6, and 24.3 degrees 2-theta, The complaint alleges that the API in the ANDA Product is "Crystalline form I" as defined by these specific XRPD peaks. The complaint notes that Alembic did not contest infringement of this claim. ¶¶ 63, 65 col. 3:29-35
wherein the crystalline form I is substantially free of any other crystalline form of...[the compound]. The allegation of infringement implies that the API in Alembic's product meets this polymorphic purity limitation. ¶63 col. 2:60-67

Identified Points of Contention

  • Factual Questions ('058 Patent): Since infringement of the '058 Patent is not conceded, a primary dispute will be factual: Do the particles in Alembic's proposed product actually have a "specific surface area (SSA) in a range from about 8 to about 16 m²/g" (Claim 1) or a "rounded particle shape" and a "volume median diameter (Dv50) ranging from between 100 µm and 1000 µm" (Claim 10)? This will require expert analysis and testing of the product.
  • Scope Questions: The case may raise questions about the scope of key terms. For the '530 and '853 Patents, a central question is the meaning of "about" in relation to the XRPD peak locations. For the '853 Patent, the interpretation of "substantially free" will define the required level of polymorphic purity. For the '058 Patent, the term "rounded particle shape" is qualitative and its scope will be a key issue.

V. Key Claim Terms for Construction

The Term: "about" (e.g., '530 Patent, Claim 1)

  • Context and Importance: This term modifies the numerical values of the XRPD peaks that define the patented crystalline form. Its construction is critical because it determines the allowable range of deviation for Alembic's product; a narrow construction could support a non-infringement argument if Alembic's peaks are close but not identical to the claimed values.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides an explicit definition, stating that peak positions "can be subject to variations of +/-0.15 degrees 2-theta" due to instrumental and environmental factors ('530 Patent, col. 4:20-24).
    • Evidence for a Narrower Interpretation: A party might argue that the term, even with the specification's guidance, does not cover any and all variations within that range if the resulting pattern would be recognized by one skilled in the art as a different polymorph.

The Term: "substantially free of any other crystalline form" ('853 Patent, Claim 1)

  • Context and Importance: This term defines the required purity of the claimed polymorph. As generic manufacturing processes may result in trace amounts of other forms, the definition of "substantially free" is central to the infringement analysis for the '853 Patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not provide a specific numerical percentage. A party could argue it has its plain meaning, referring to a level of purity that does not materially alter the properties of the bulk material for its intended pharmaceutical purpose.
    • Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the goal of obtaining a "substantially pure crystalline form" ('853 Patent, col. 2:42-43). A party could argue this implies a very high degree of purity (e.g., >95% or >99%) and that the term is not met if detectable amounts of other polymorphs are present.

The Term: "rounded particle shape" ('058 Patent, Claim 10)

  • Context and Importance: This is a qualitative physical descriptor of the particles, contrasted with prior art particles having 'sharp edges.' Practitioners may focus on this term because its subjective nature makes it a prime candidate for dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification links the term to functional benefits like improved flowability and provides quantitative guidance, describing the particles as having a "mean HS (high sensitivity) circularity higher than 0.89" ('058 Patent, col. 3:48-49), suggesting an objective measure.
    • Evidence for a Narrower Interpretation: The patent describes the particles as having "substantially spherical, elliptical or potato-like geometries" ('058 Patent, col. 3:40-41) and provides a scanning electron microscope image (FIG. 2) that could be argued to define the required morphology, potentially limiting the scope to particles that visually conform to that image.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges active inducement and contributory infringement for all four patents. The allegations are based on Alembic's knowledge of the patents and its intent for the ANDA product to be used in an infringing manner, as allegedly directed by the proposed product labeling (e.g., Compl. ¶¶ 56-59, 66-68, 75-77, 84-86). The complaint states the product and its labeling are "especially made or adapted for use in infringing" and are "not suitable for substantial non-infringing use" (e.g., Compl. ¶58).

Willful Infringement

  • While the complaint does not explicitly use the word "willful," it alleges that Alembic has knowledge of the patents-in-suit as of the date of its Notice Letter (e.g., Compl. ¶¶ 44, 89, 100). This alleged knowledge, combined with the prayer for relief seeking a declaration of an "exceptional case" and attorneys' fees pursuant to 35 U.S.C. § 285, lays the foundation for a claim of enhanced damages based on post-suit infringement (Compl. ¶131(g)).

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

  • A central issue will be one of validity versus infringement. As the complaint alleges infringement was not contested for three of the four patents, the case may pivot to Alembic's asserted defense that the patents are invalid. The key question is whether Alembic can present clear and convincing evidence that the claims to specific polymorphs and particle characteristics are obvious or otherwise invalid over the prior art.
  • The litigation will likely involve a battle over claim scope. Can Plaintiffs secure a construction of key terms like "about," "substantially free," and "rounded particle shape" that is broad enough to cover Alembic's product, or will these terms be construed narrowly or found indefinite, providing a non-infringement defense?
  • A key evidentiary question will be one of factual characterization. For the '058 patent in particular, the outcome will depend on competing expert analyses of Alembic's confidential product. Does the physical evidence from testing show that Alembic's particles meet the specific numerical and qualitative limitations of the claims, or is there a fundamental mismatch in their physical properties?