DCT

1:25-cv-01306

Pfizer Inc v. Apotex Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-01306, D. Del., 10/24/2025
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Apotex Corp. is a Delaware corporation and Defendant Apotex Inc. is subject to personal jurisdiction in the district.
  • Core Dispute: Plaintiffs allege that Defendants' submission of an Abbreviated New Drug Application (ANDA) to the FDA for a generic version of the drug Vyndamax® constitutes an act of infringement of a patent covering specific crystalline forms of the active ingredient, tafamidis.
  • Technical Context: The dispute centers on polymorphism in pharmaceutical science, where a single chemical compound can exist in multiple solid-state crystalline forms, each with distinct physical properties that can affect a drug's stability, manufacturability, and bioavailability.
  • Key Procedural History: This litigation was initiated under the Hatch-Waxman Act following Defendants' notification to Plaintiffs on September 9, 2025, that they had filed ANDA No. 218905 with the FDA. This ANDA contained a "Paragraph IV certification," asserting that the patent-in-suit is invalid, unenforceable, or will not be infringed by the proposed generic product.

Case Timeline

Date Event
2014-09-08 U.S. Patent No. 9,770,441 Priority Date
2017-09-26 U.S. Patent No. 9,770,441 Issues
2025-09-09 Apotex sends notice letter to Pfizer regarding ANDA filing
2025-10-24 Complaint Filed

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

U.S. Patent No. 9,770,441 - "CRYSTALLINE SOLID FORMS OF 6-CARBOXY-2-(3,5-DICHLOROPHENYL)-BENZOXAZOLE"

The Invention Explained

  • Problem Addressed: The patent's background explains that for a pharmaceutical compound, having a consistent and stable solid form is critical. Different physical forms of the same compound, known as polymorphs, can have different properties, such as stability and solubility, which can create inconsistencies in manufacturing and clinical performance. The absence of a well-defined solid form can jeopardize the development of a suitable dosage form. (’441 Patent, col. 1:48-56).
  • The Patented Solution: The invention provides specific, stable crystalline forms of the compound 6-carboxy-2-(3,5-dichlorophenyl)-benzoxazole, the active ingredient in Vyndamax®. Rather than claiming the chemical compound itself, which was known, the patent claims specific physical forms (polymorphs) of that compound. These forms are uniquely identified and defined by their characteristic analytical signatures, such as specific peaks in powder X-ray diffraction (PXRD) patterns, solid-state Nuclear Magnetic Resonance (NMR) spectra, and Raman spectra. (’441 Patent, Abstract; col. 2:6-15).
  • Technical Importance: Identifying and claiming specific, stable crystalline forms of an active pharmaceutical ingredient provides predictability and control over the drug's physical properties, which is essential for large-scale manufacturing and ensuring consistent product quality and therapeutic effect. (’441 Patent, col. 9:48-52).

Key Claims at a Glance

  • The complaint asserts infringement of claims 1-16. Independent claims 1, 15, and 16 are identified as examples.
  • Independent Claim 1: Defines a specific crystalline form of the compound by its analytical characteristics. Its essential elements are:
    • A crystalline form of 6-carboxy-2-(3,5-dichlorophenyl)-benzoxazole,
    • Wherein the crystalline form has at least one of three specified analytical parameters:
      • a solid-state NMR spectrum with 13C chemical shifts at 120.8±0.2 and 127.7±0.2 ppm, OR
      • a powder X-ray diffraction pattern with a peak at a diffraction angle (2θ) of 28.6°±0.2, OR
      • a Raman spectrum with a Raman shift peak at 1292±2 cm⁻¹.
  • Independent Claim 15: Claims a pharmaceutical composition comprising the crystalline form of claim 1.
  • Independent Claim 16: Claims a method of treating transthyretin amyloid disease by administering the crystalline form of claim 1.
  • The complaint alleges infringement of dependent claims as well (Compl. ¶40).

III. The Accused Instrumentality

Product Identification

"Apotex's ANDA Product," a generic version of Vyndamax® (tafamidis) 61 mg capsules, for which Apotex seeks FDA approval via ANDA No. 218905 (Compl. ¶1, ¶2).

Functionality and Market Context

  • The accused product is alleged to contain tafamidis as its active ingredient and is intended for the treatment of cardiomyopathy of wild-type or hereditary transthyretin-mediated amyloidosis (Compl. ¶26, ¶27, ¶42).
  • As an ANDA product, it is intended to be a bioequivalent and lower-cost generic substitute for Plaintiffs' branded drug, Vyndamax®, upon its potential market entry (Compl. ¶1, ¶28).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

  • Claim Chart Summary: The complaint alleges infringement on "information and belief." The following table summarizes the allegations for the core composition claim.

U.S. Patent No. 9,770,441 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A crystalline form of 6-carboxy-2-(3,5-dichlorophenyl)-benzoxazole... Apotex's ANDA Product is alleged to contain a crystalline form of tafamidis, which is the chemical name for 6-carboxy-2-(3,5-dichlorophenyl)-benzoxazole. ¶42, ¶43 col. 1:21-48
...wherein said crystalline form has an analytical parameter selected from the group consisting of a solid state NMR spectrum comprising 13C chemical shifts (ppm) at 120.8±0.2 and 127.7±0.2, a powder X-ray diffraction pattern comprising a peak at a diffraction angle (20) of 28.6°±0.2, and a Raman spectrum comprising a Raman shift peak (cm⁻¹) at 1292±2. On information and belief, Apotex's product is alleged to possess at least one of the three recited analytical signatures: the specified solid-state NMR shifts, the specified powder X-ray diffraction peak, or the specified Raman shift peak. ¶43 col. 2:6-24
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint pleads infringement on "information and belief," which suggests Plaintiffs may not yet have definitive analytical data on Apotex's proposed product. A central question for discovery will be whether the specific crystalline form of tafamidis in Apotex's ANDA product actually exhibits any of the three analytical signatures required by Claim 1.
    • Technical Questions: Assuming Apotex's product is characterized, a potential dispute may arise over measurement variability. The analysis will raise the question of whether Apotex's measured values for NMR, PXRD, or Raman spectra fall within the claimed ranges, including the specified tolerances (e.g., ±0.2° for PXRD).

V. Key Claim Terms for Construction

  • The Term: "crystalline form"
  • Context and Importance: This term is foundational to the entire dispute. The patent claims a specific physical form of a known compound. The definition of "crystalline form" will be critical in distinguishing the claimed invention from the prior art compound, as well as from other potential non-infringing forms, such as an amorphous version of tafamidis. Practitioners may focus on this term to determine the precise scope of what physical structures are covered by the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not limit the term to a single, perfect crystal structure. The use of "a crystalline form" could be argued to encompass any solid material containing the claimed compound that exhibits the necessary analytical characteristics, even if it contains minor impurities or defects, as long as it meets the definition of "crystalline."
    • Evidence for a Narrower Interpretation: The specification explicitly defines "crystalline" as a "solid substance exhibiting three-dimensional order, which in contrast to an amorphous solid substance, gives a distinctive PXRD pattern with sharply defined peaks" (’441 Patent, col. 12:1-5). This language provides a clear basis to argue that the claims do not cover amorphous or non-crystalline materials. Furthermore, the detailed characterization of specific polymorphs (e.g., "Form 1") could be used to argue that the claims are limited to these specifically disclosed and characterized structures (’441 Patent, col. 2:16-24).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement, asserting that Apotex's proposed product labeling will direct and encourage medical providers and patients to use the generic product in a manner that infringes method claim 16 (Compl. ¶47, ¶52). Contributory infringement is also alleged on the basis that the accused product is especially made for an infringing use and is not a staple article with substantial non-infringing uses (Compl. ¶53).
  • Willful Infringement: Willfulness is alleged based on Apotex's knowledge of the ’441 patent, as evidenced by its ANDA filing and the notice letter sent to Pfizer, and the assertion that Apotex lacks a reasonable basis to believe its product would not be found to infringe (Compl. ¶56).

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

  • A core issue will be one of evidentiary proof: does the specific crystalline form of tafamidis in Apotex's proposed generic product, as described in its confidential ANDA submission, actually possess one of the three distinct analytical fingerprints (NMR, PXRD, or Raman) recited in Claim 1? The case will likely hinge on the discovery and expert analysis of this technical data.
  • A secondary but critical issue may be one of metrological scope: should the characterization data for Apotex's product prove to be close to the claimed parameters, the dispute may turn on the interpretation of the numerical ranges in the claims. The court will need to determine whether Apotex's product falls inside or outside the boundaries defined by terms like "±0.2," a question that involves both claim construction and the technical realities of analytical measurement.