DCT
1:16-cv-09583
AstraZeneca Ab v. Cipla Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AstraZeneca AB (Sweden), Aktiebolaget Hässle (Sweden), AstraZeneca LP (Delaware), and Zeneca Inc. (Delaware)
- Defendant: Cipla Limited (India) and Cipla USA Inc. (Delaware)
- Plaintiff’s Counsel: McCarter & English LLP
- Case Identification: 1:16-cv-09583, D.N.J., 12/29/2016
- Venue Allegations: Venue is alleged to be proper based on Defendants' distribution, marketing, and sales of pharmaceutical products to residents of New Jersey, as well as Defendants' stated intention to market the accused generic product in the state upon FDA approval. The complaint also notes that Defendants have previously consented to personal jurisdiction in the District of New Jersey in other patent lawsuits.
- Core Dispute: Plaintiffs allege that Defendants' Abbreviated New Drug Application (ANDA) to market a generic version of the over-the-counter heartburn medication NEXIUM 24HR® constitutes an act of infringement of two patents covering a specific form of esomeprazole magnesium.
- Technical Context: The technology at issue is a specific crystalline hydrate form of esomeprazole, the S-enantiomer of omeprazole, a proton pump inhibitor used to treat gastric-acid related conditions.
- Key Procedural History: This is a Hatch-Waxman lawsuit initiated under 35 U.S.C. § 271(e)(2) following Plaintiffs' receipt of a "Paragraph IV" notice letter from Defendants. In the letter, Defendants certified that the patents-in-suit are invalid, unenforceable, or will not be infringed by their proposed generic product. The complaint also certifies that the case is related to numerous other pending lawsuits filed by the same Plaintiffs against different generic drug manufacturers over the same or similar subject matter.
Case Timeline
| Date | Event |
|---|---|
| 1997-05-30 | Earliest Priority Date for ’085 and ’070 Patents |
| 2002-04-09 | U.S. Patent No. 6,369,085 Issued |
| 2008-08-12 | U.S. Patent No. 7,411,070 Issued |
| 2016-11-15 | Date of Defendants' ANDA Notice Letter to Plaintiffs |
| 2016-12-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,369,085 - "Form of S-omeprazole," issued April 9, 2002
The Invention Explained
- Problem Addressed: The patent describes the compound omeprazole as a chiral sulfoxide used to inhibit gastric acid secretion (Compl. ¶33; ’085 Patent, col. 1:20-28). The background suggests that previously known forms of its S-enantiomer were not in a "well defined state," which could present challenges for stability, characterization, and reproducible large-scale manufacturing (’085 Patent, col. 2:23-28).
- The Patented Solution: The invention is a "novel form" of the magnesium salt of S-omeprazole, specifically a trihydrate, that is described as "highly crystalline" and "substantially pure" (’085 Patent, Abstract; col. 2:13-16, 2:46-47). This specific crystalline form is characterized by a unique X-ray powder diffractogram (XRPD), which provides a structural fingerprint. The patent states this form is more stable and easier to synthesize in a reproducible manner, making it better suited for pharmaceutical production (’085 Patent, col. 2:21-28).
- Technical Importance: The development of a stable, well-defined crystalline form of an active pharmaceutical ingredient is critical for ensuring consistent quality, shelf life, and bioavailability in a commercial drug product (’085 Patent, col. 2:21-28).
Key Claims at a Glance
- The complaint does not identify specific asserted claims. Independent Claim 1 defines the core composition of matter:
- The magnesium salt of S-omeprazole trihydrate,
- wherein the compound is characterized by a specific set of major peaks in its X-ray diffractogram.
- Other independent claims are directed to processes for making the compound (Claim 5), pharmaceutical compositions containing it (Claim 11), and methods of using it for treatment (Claim 12). The complaint reserves the right to assert additional claims (’085 Patent, col. 10:15-11:5).
U.S. Patent No. 7,411,070 - "Form of S-omeprazole," issued August 12, 2008
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’085 Patent, this patent addresses the same technical problem: the need for a stable, well-defined form of S-omeprazole magnesium salt suitable for pharmaceutical use (’070 Patent, col. 1:25-34).
- The Patented Solution: The specification describes the same "highly crystalline" magnesium salt of S-omeprazole trihydrate as the ’085 Patent (’070 Patent, col. 2:20-34). However, the key independent claim is drafted more broadly.
- Technical Importance: As with the ’085 Patent, the invention provides a form of the active ingredient with improved stability and manufacturing characteristics (’070 Patent, col. 2:26-34).
Key Claims at a Glance
- The complaint does not identify specific asserted claims. Independent Claim 1 is directed broadly to the composition itself:
- The magnesium salt of S-omeprazole trihydrate.
- Notably, this claim does not include the limiting XRPD peak characteristics found in Claim 1 of the ’085 Patent. The complaint reserves the right to assert additional claims (’070 Patent, col. 10:50-11:1).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is "Cipla's ANDA Product," identified as "esomeprazole magnesium delayed-release tablets, 20 mg (OTC)" (Compl. ¶14).
Functionality and Market Context
- The product is a generic version of Plaintiffs' NEXIUM 24HR® product (Compl. ¶14). It is intended for the treatment of frequent heartburn by inhibiting gastric acid secretion in patients (Compl. ¶9, ¶33). The active ingredient in the branded product is identified as "Esomeprazole magnesium trihydrate" (Compl. ¶9). The filing of an ANDA suggests Defendants seek to market their product as a bioequivalent alternative to the established branded drug. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides a high-level notice pleading without detailed infringement contentions or claim charts. The allegations are based on Defendants' filing of ANDA No. 209542, which seeks FDA approval to market a generic version of Plaintiffs' product before the expiration of the patents-in-suit (Compl. ¶30, ¶36).
’085 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The magnesium salt of S-omeprazole trihydrate, | The accused ANDA product is identified as "esomeprazole magnesium delayed-release tablets." The complaint alleges this product will infringe, thereby asserting that the active ingredient is the claimed magnesium salt of S-omeprazole trihydrate. | ¶14, ¶32 | col. 10:15-16 |
| wherein the compound is characterized by the following major peaks in its X-ray diffractogram: | The complaint does not present any technical data, but its allegation of infringement under 35 U.S.C. § 271(e)(2) is predicated on the assertion that the product described in the ANDA will meet all limitations of the asserted claims, including these structural ones. | ¶32 | col. 10:17-27 |
’070 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The magnesium salt of S-omeprazole trihydrate. | The accused ANDA product is identified as "esomeprazole magnesium delayed-release tablets." The complaint alleges this product will infringe the ’070 Patent claims. | ¶14, ¶38 | col. 10:51 |
- Identified Points of Contention:
- Factual/Evidentiary Question: A central factual dispute for the ’085 Patent will be whether the esomeprazole magnesium in Cipla's ANDA product is, in fact, the specific crystalline trihydrate form defined by the XRPD peaks in the claims. The case may involve a "battle of the experts" over the polymorphic form of the accused product.
- Scope & Validity Question: For the ’070 Patent, the dispute may focus on the proper scope and validity of the broad claim to "The magnesium salt of S-omeprazole trihydrate." Defendants may argue that the claim is invalid as anticipated or obvious, or that it is not fully enabled or described by the patent's specification, which focuses heavily on one particular crystalline form.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a definitive analysis of claim construction disputes. However, based on the technology, certain terms are likely to be central.
- The Term: "trihydrate"
- Context and Importance: This term, appearing in the independent claims of both patents, defines the chemical composition by its degree of hydration. Practitioners may focus on this term because the infringement analysis will depend on whether the accused product contains precisely three molecules of water per molecule of magnesium S-omeprazole, or if it constitutes a different hydrate (e.g., a dihydrate) or an anhydrous form. The precise water content and method of measurement could become a key point of contention.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes processes for preparing the claimed compound by treating "a magnesium salt of S-omeprazole of any form" with water, which may support an argument that "trihydrate" should be given its plain chemical meaning, not tied to any single preparatory method (’085 Patent, col. 2:61-65).
- Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the "novel form" of the invention as being "highly crystalline" and existing in a "well defined state" (’085 Patent, col. 2:15, 2:26, 2:47). A party could argue that the term "trihydrate," in the context of the patent, refers not just to any compound with a 3:1 water-to-salt ratio, but specifically to the stable, crystalline polymorph detailed in the patent's examples.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants will induce infringement by patients who will administer the ANDA product as directed (Compl. ¶33, ¶39). The basis for this allegation is the product's intended use for treating heartburn, which would be directed by the product's labeling and instructions for use.
- Willful Infringement: The complaint does not explicitly allege willful infringement. However, it does request attorneys' fees under 35 U.S.C. § 285 (Prayer ¶E). The factual predicate for such a request is Defendants' knowledge of the patents, which the complaint alleges was established, at the latest, by the ANDA Notice Letter dated November 15, 2016 (Compl. ¶15, ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of polymorphic identity: does the active ingredient in Cipla’s ANDA product possess the specific crystalline structure, including the X-ray diffraction peaks, required by the asserted claims of the ’085 patent, or does it utilize a different, potentially non-infringing, polymorph of esomeprazole magnesium?
- A central legal question will concern the scope and validity of the ’070 patent's broad claim to "The magnesium salt of S-omeprazole trihydrate." The court will likely need to determine whether this broad claim is validly supported by a specification that heavily details a single crystalline form, or if it is invalid for overbreadth, lack of written description, or anticipation by prior art forms of esomeprazole magnesium.