DCT
1:17-cv-11923
Purdue Pharma LP v. Collegium Pharmaceutical
I. Executive Summary and Procedural Information
Parties & Counsel:
- Plaintiff: Purdue Pharma L.P., The P.F. Laboratories, Inc., Purdue Pharmaceuticals L.P., and Rhodes Technologies (collectively, "Purdue") (Delaware/New Jersey)
- Defendant: Collegium Pharmaceutical, Inc. ("Collegium") (Virginia)
- Plaintiff’s Counsel: Jones Day
Case Identification: 1:17-cv-11923, D. Mass., 10/06/2017
Venue Allegations: Venue is based on Collegium having its principal place of business in the District of Massachusetts.
Core Dispute: Plaintiff alleges that Defendant’s submission of a Supplemental New Drug Application for its Xtampza® ER extended-release oxycodone capsules constitutes an act of patent infringement, as the product described therein allegedly falls within the scope of patents claiming highly purified oxycodone hydrochloride compositions with specific low levels of certain impurities.
Technical Context: The technology concerns the manufacturing and composition of active pharmaceutical ingredients (APIs), specifically focusing on methods to reduce unwanted chemical byproducts in oxycodone hydrochloride, a widely used opioid analgesic.
Key Procedural History: The complaint describes an extensive litigation history between the parties. Purdue previously filed multiple lawsuits against Collegium, beginning in March 2015, asserting different but related patents covering its OxyContin® product against Collegium's original New Drug Application for Xtampza®. This current action is directed at a supplemental NDA filed by Collegium.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-30 | Earliest Priority Date for ’919 and ’933 Patents |
| 2015-03-24 | Purdue files first related complaint against Collegium |
| 2015-08-06 | Purdue files second related complaint against Collegium |
| 2015-11-06 | Purdue files third related complaint against Collegium |
| 2016-04-26 | FDA approves Collegium's original NDA for Xtampza® |
| 2016-06-10 | Purdue files fourth related complaint against Collegium |
| 2016-06-20 | Collegium announces commercial launch of Xtampza® |
| 2016-12-20 | U.S. Patent No. 9,522,919 Issues |
| 2016-12-20 | U.S. Patent No. 9,073,933 Issues |
| 2017-04-21 | Purdue files fifth related complaint against Collegium |
| 2017-08-25 | Collegium submits Supplemental NDA for Xtampza® ER (on or before this date) |
| 2017-09-21 | Purdue files sixth related complaint against Collegium |
| 2017-10-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,522,919 - "OXYCODONE COMPOSITIONS"
The Invention Explained
- Problem Addressed: The patent’s background explains that oxycodone is a semi-synthetic opioid often produced from thebaine, a compound derived from opium (’919 Patent, col. 1:39-44). The synthesis process can create unwanted byproducts or impurities. Specifically, the conversion of an oxycodone free base to oxycodone hydrochloride can create the impurity 14-hydroxycodeinone, and commercially available oxycodone API has been found to contain this impurity at levels greater than 100 parts per million (ppm) (’919 Patent, col. 2:6-15).
- The Patented Solution: The invention is a composition of oxycodone hydrochloride that is characterized by very low levels of specific impurities. The patent describes processes, such as hydrogenation, that can reduce these impurities to the claimed low levels, resulting in a more purified final drug product (’919 Patent, Abstract; col. 3:1-10). The key innovation is the composition itself, defined by what is—and what is not—present in it.
- Technical Importance: Achieving high purity in an active pharmaceutical ingredient is critical for ensuring drug safety, stability, and predictable therapeutic effects.
Key Claims at a Glance
- The complaint asserts independent claims 1, 4, 12, and 18 (Compl. ¶30).
- Claim 1 (as described in the complaint) recites:
- An oxycodone hydrochloride composition
- comprising oxycodone HCl and 8α,4-dihydroxy-7,8-dihydrocodeinone
- wherein the ratio of 8α,4-dihydroxy-7,8-dihydrocodeinone to oxycodone HCl is 0.04% or less as measured by HPLC.
- The complaint notes that claims 4, 12, and 18 are also independent and asserted (Compl. ¶30). The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,073,933 - "OXYCODONE COMPOSITIONS HAVING LESS THAN 25 PPM 14-HYDROXYCODEINONE"
The Invention Explained
- Problem Addressed: Similar to the ’919 patent, this patent addresses the problem of impurities created during the synthesis of oxycodone hydrochloride. The background section notes that the conversion of an intermediate compound, 14-hydroxycodeinone, into oxycodone is a key step, but that over-oxidized products can be formed and carried through the process, ultimately leading to undesirable impurities in the final drug product (’933 Patent, col. 2:1-12). Current commercially available oxycodone API was known to have levels of the impurity 14-hydroxycodeinone greater than 100 ppm (’933 Patent, col. 2:16-19).
- The Patented Solution: The invention provides an oxycodone hydrochloride composition defined by a low level of the specific impurity 14-hydroxycodeinone (less than 25 ppm) in combination with the presence of another compound, 8α,14-dihydroxy-7,8-dihydrocodeinone, and a high concentration of the active ingredient itself (’933 Patent, Abstract). The patent discloses processes that can achieve this level of purity (’933 Patent, col. 2:30-41).
- Technical Importance: By creating a composition with a specified low level of a known impurity, the invention provides a purer and potentially safer form of the oxycodone API.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 10, and claim 16 (Compl. ¶32).
- Claim 1 recites:
- An oxycodone hydrochloride composition which comprises
- at least 95% oxycodone hydrochloride,
- 8α,14-dihydroxy-7,8-dihydrocodeinone, and
- less than 25 ppm of 14-hydroxycodeinone.
- Claim 10 is also identified as an asserted independent claim (Compl. ¶32). Claim 16 recites a similar composition but requires "less than 5 ppm of 14-hydroxycodeinone" (Compl. ¶32). The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are Collegium's Xtampza® ER (oxycodone extended release) capsules in 9 mg, 13.5 mg, 18 mg, 27 mg, and 36 mg dosages, collectively referred to as the "Collegium Supplemental NDA Products" (Compl. ¶1). The act of infringement alleged is the submission of Supplemental New Drug Application (sNDA) No. 208090 to the FDA seeking approval for revised labeling for these products (Compl. ¶1).
Functionality and Market Context
- Xtampza® ER is an extended-release opioid analgesic for pain relief (Compl. ¶2). The complaint alleges that the patents-in-suit are listed in the FDA's Orange Book as covering Purdue's drug OxyContin®, suggesting Xtampza® ER is a competitor product (Compl. ¶26, ¶29). The core of the dispute centers on the chemical composition of the oxycodone HCl API used in the accused products, as described in the sNDA submitted to the FDA (Compl. ¶25-26).
IV. Analysis of Infringement Allegations
The complaint does not provide specific factual allegations mapping elements of the accused products to the claim limitations, which is common in actions filed under 35 U.S.C. § 271(e)(2) prior to discovery of the confidential sNDA. The infringement theory is based on "information and belief" that the products described in the sNDA will have the claimed chemical compositions (Compl. ¶30, ¶32).
- ’919 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An oxycodone hydrochloride composition | The complaint alleges the Collegium Supplemental NDA Products are, or contain, an oxycodone hydrochloride composition. | ¶30 | col. 33:66-67 |
| comprising oxycodone HCl and 8α,4-dihydroxy-7,8-dihydrocodeinone, | The complaint alleges upon information and belief that the accused products' composition contains these specified chemical compounds. | ¶30 | col. 34:2-4 |
| wherein the ratio of 8α,4-dihydroxy-7,8-dihydrocodeinone to oxycodone HCl is 0.04% or less as measured by HPLC. | The complaint alleges upon information and belief that the accused products' composition meets this specific impurity ratio limitation. | ¶30 | col. 34:5-7 |
- ’933 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An oxycodone hydrochloride composition which comprises | The complaint alleges the Collegium Supplemental NDA Products are, or contain, an oxycodone hydrochloride composition. | ¶32 | col. 33:65-66 |
| at least 95% oxycodone hydrochloride, | The complaint alleges upon information and belief that the accused products' composition meets this purity level. | ¶32 | col. 34:2 |
| 8α,14-dihydroxy-7,8-dihydrocodeinone, and | The complaint alleges upon information and belief that the accused products' composition contains this specified chemical compound. | ¶32 | col. 34:3 |
| less than 25 ppm of 14-hydroxycodeinone. | The complaint alleges upon information and belief that the accused products' composition meets this specific impurity level limitation. | ¶32 | col. 34:4-5 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Evidentiary Questions: The central issue will be factual and evidentiary. Does the chemical composition of the Xtampza® ER product, as specified in Collegium’s confidential sNDA, actually contain the impurities at the specific low ratios and concentrations required by the asserted claims? The complaint's allegations are based on "information and belief," and the case will depend on what discovery reveals.
- Technical Questions: What evidence does the complaint provide that the API in the accused products contains "8α,4-dihydroxy-7,8-dihydrocodeinone" (for the ’919 patent) or "8α,14-dihydroxy-7,8-dihydrocodeinone" (for the ’933 patent) at all, as their presence is a required element of the asserted claims?
V. Key Claim Terms for Construction
- The Term: "as measured by HPLC" (’919 patent) and the implicit measurement method for ppm levels (’933 patent).
- Context and Importance: The claims define the invention by quantitative measurements of chemical purity (e.g., "0.04% or less," "less than 25 ppm"). The specific methodology used to arrive at these values is therefore critical. Practitioners may focus on this aspect because different analytical techniques or parameters (e.g., different columns, temperatures, or mobile phases in High-Performance Liquid Chromatography) can yield different quantitative results, potentially moving a product's measured composition into or out of the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "as measured by HPLC" does not restrict the claim to a single method, but covers any scientifically valid HPLC method known at the time for quantifying such compounds. This interpretation would broaden the claim to cover any product that shows the claimed purity ratio when tested by any reasonable HPLC technique.
- Evidence for a Narrower Interpretation: The patents provide detailed examples of specific HPLC methods used by the inventors to measure the impurities (’933 Patent, col. 27:1-67, detailing Example 4). A party could argue that the claims should be construed as being limited to the results obtained when using the specific HPLC parameters disclosed in the patent's specification, as this represents the method the inventors used and described to define their invention.
VI. Other Allegations
- Indirect Infringement: The complaint states a claim for relief under 35 U.S.C. § 271(e)(2)(A), which defines the submission of an sNDA for a drug claimed in a patent as a statutory act of direct infringement (Compl. ¶36, ¶40). The prayer for relief also requests a judgment that future commercial activity will induce and contribute to infringement, a standard component of such complaints (Prayer for Relief ¶A).
- Willful Infringement: The complaint does not contain specific factual allegations to support a claim for willful infringement. However, it requests that the case be declared "exceptional" to support an award of attorneys' fees under 35 U.S.C. § 285 (Prayer for Relief ¶E).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two primary questions:
- A core issue will be one of evidentiary proof: Does the composition of Collegium's Xtampza® ER API, as detailed in its confidential Supplemental New Drug Application, fall within the precise quantitative limits for specific impurities recited in the asserted claims of the ’919 and ’933 patents?
- A key technical question will be one of analytical methodology: If the impurity levels are near the claimed thresholds, will the litigation turn on whether the specific High-Performance Liquid Chromatography (HPLC) method disclosed in the patents’ examples is the sole standard for infringement, or whether other scientifically valid analytical methods can be used to determine the product's composition for the purposes of the infringement analysis?