DCT

1:25-cv-01532

Pfizer Inc v. Apotex Inc

Log In
Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-01532, D. Del., 12/18/2025
  • Venue Allegations: Venue is alleged to be proper as to Defendant Apotex Corp. on the basis of its incorporation in Delaware, and as to Defendant Apotex Inc. on the basis that it is subject to personal jurisdiction within the district.
  • Core Dispute: Plaintiffs allege that Defendants’ submission of an Abbreviated New Drug Application (ANDA) to the FDA, seeking to market a generic version of the drug Vyndamax® (tafamidis), constitutes an act of infringement of a patent covering specific crystalline forms of the active ingredient.
  • Technical Context: The dispute centers on pharmaceutical polymorphs—different crystalline structures of the same active pharmaceutical ingredient—which can have distinct physical properties affecting a drug's stability, manufacturability, and performance.
  • Key Procedural History: The complaint notes that this filing follows a "Second Notice Letter" from Apotex. An earlier complaint was filed by Plaintiffs on October 24, 2025, after a "First Notice Letter," but Apotex subsequently informed Plaintiffs that it did not, at that time, maintain the required Paragraph IV certification, which is a prerequisite for such a suit. Apotex's re-filing of the certification prompted the current litigation.

Case Timeline

Date Event
2014-09-08 ’441 Patent Priority Date
2017-09-26 ’441 Patent Issue Date
2025-09-09 Apotex’s First Notice Letter to Pfizer
2025-10-24 Plaintiffs file initial complaint against Apotex
2025-11-05 Apotex’s Second Notice Letter to Pfizer
2025-12-18 Complaint Filing Date

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 different solid forms of a pharmaceutical compound can have significantly different physical properties, which affects parameters like storage stability, compressibility for tablet manufacturing, and dissolution rates that influence bioavailability. The development of a drug product requires identifying and controlling the specific solid form to ensure consistent quality and performance. (’441 Patent, col. 1:47-64).
  • The Patented Solution: The invention identifies and characterizes specific crystalline solid forms of the compound 6-carboxy-2-(3,5-dichlorophenyl)-benzoxazole (tafamidis). These forms are distinguished from each other and from amorphous forms by unique 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. 2:7-15).
  • Technical Importance: Claiming distinct, stable crystalline forms of an active pharmaceutical ingredient is a critical strategy for ensuring product consistency and protecting a drug from generic competition.

Key Claims at a Glance

  • The complaint asserts infringement of claims 1-16. Independent claim 1 is the primary composition of matter claim, with claims 15 (pharmaceutical composition) and 16 (method of treatment) depending upon it. (Compl. ¶45).
  • Essential elements of Independent Claim 1:
    • A crystalline form of 6-carboxy-2-(3,5-dichlorophenyl)-benzoxazole,
    • wherein said crystalline form has an analytical parameter selected from a Markush group consisting of:
      • a solid state NMR spectrum comprising specific 13C chemical shifts (120.8±0.2 and 127.7±0.2 ppm),
      • a powder X-ray diffraction pattern comprising a specific peak (at a diffraction angle (2θ) of 28.6±0.2), OR
      • a Raman spectrum comprising a specific Raman shift peak (1292±2 cm⁻¹).
  • The complaint alleges infringement of claims 1-16, thereby including dependent claims which further narrow the invention. (Compl. ¶45).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is "Apotex's ANDA Product," a proposed generic version of Vyndamax® (tafamidis) 61 mg capsules, identified in connection with ANDA No. 218905 submitted to the FDA. (Compl. ¶¶1-2).

Functionality and Market Context

The product is intended for the treatment of cardiomyopathy of wild-type or hereditary transthyretin-mediated amyloidosis in adults, which is the same indication as the branded drug, Vyndamax®. (Compl. ¶26). Apotex seeks approval to manufacture and sell this product in the U.S. market as a generic alternative prior to the expiration of the ’441 Patent. (Compl. ¶1).

IV. Analysis of Infringement Allegations

’441 Patent 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 contains tafamidis, which is an alternative name for the claimed compound, and is alleged to be in a crystalline form. ¶47, ¶48 col. 1:15-18
...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. Upon information and belief, Apotex's ANDA product is alleged to contain a crystalline form of tafamidis that has one or more of the claimed analytical parameters, including the specified NMR shifts, PXRD peak, or Raman peak. ¶48 col. 23:7-16

Identified Points of Contention

  • Evidentiary Questions: The complaint's infringement allegations are made "upon information and belief," which is standard in ANDA litigation prior to discovery. A central point of contention will be factual: does the crystalline form of tafamidis in Apotex's actual ANDA product, as characterized in its confidential FDA submission and through laboratory analysis of samples, exhibit the specific analytical parameters required by Claim 1?
  • Scope Questions: The case may raise questions about the scope of the claimed numerical ranges. For example, a dispute could arise over whether an observed PXRD peak in the accused product at 28.81° 2θ falls within the claimed range of "28.6±0.2," and how experimental variability inherent in such measurements should be treated in the infringement analysis.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "...a peak at a diffraction angle (20) of 28.6±0.2"
  • Context and Importance: This term, and others like it in the claims, defines the precise analytical fingerprint of the patented crystalline form. The numerical range with the "±0.2" tolerance is critical. Infringement will turn on whether Apotex's product generates data that falls within this boundary. Practitioners may focus on this term because the entire infringement case for this claim limitation hinges on a comparison of analytical data against this defined range.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification explicitly acknowledges experimental variability, stating that "one skilled in the art will appreciate that the peak positions (20) will show some variability, typically as much as 0.1 to 0.2 degrees." (Compl. ¶22; ’441 Patent, col. 11:36-40). Plaintiffs may argue this language supports interpreting the claimed range as encompassing standard measurement error.
    • Evidence for a Narrower Interpretation: Defendants may argue that the claim's explicit recitation of "±0.2" has already accounted for any intended tolerance. The patentee chose this specific numerical boundary to define its invention, and it should be strictly applied as written, as evidenced by the detailed peak lists provided for specific embodiments. (Compl. ¶22; ’441 Patent, FIG. 2).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement, asserting that Apotex's proposed product labeling will direct and encourage administration of the product in a manner that infringes the patented method of treatment (Claim 16). (Compl. ¶¶52, 57). Contributory infringement is also alleged, based on the assertion that Apotex's product is not a staple article of commerce suitable for substantial non-infringing use. (Compl. ¶58).
  • Willful Infringement: The complaint alleges that Apotex has acted with full knowledge of the ’441 Patent and without a reasonable basis for believing it would not be liable for infringement. (Compl. ¶61). This allegation is supported by the fact that Apotex filed a Paragraph IV certification with the FDA, an act which requires acknowledging the existence of the patent-in-suit. (Compl. ¶44).

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

  • A primary issue will be one of factual proof: does the specific crystalline form of tafamidis in Apotex's ANDA product, once revealed in discovery, actually exhibit the analytical characteristics (NMR, PXRD, or Raman spectra) recited in the asserted claims of the ’441 Patent? The complaint's "information and belief" pleading underscores that this central question remains to be answered with evidence.
  • A secondary, but potentially dispositive, question will be one of infringement scope: should the numerically defined claim limitations (e.g., "28.6±0.2") be interpreted as absolute boundaries, or do they accommodate additional leeway for standard experimental error? The resolution of this issue will determine how data from the accused product is compared to the patent's claims.