DCT
1:22-cv-06030
Nexus Pharma Inc v. Nevakar Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nexus Pharmaceuticals, Inc. (Illinois)
- Defendant: Nevakar, Inc. (Delaware/New Jersey); Nevakar Injectables, Inc. (Delaware/New Jersey); Par Sterile Products, LLC (Delaware/New York); Par Pharmaceutical, Inc. (Delaware/New York); Endo Ventures Ltd. (Ireland); and Endo International PLC (Ireland)
- Plaintiff’s Counsel: Robinson Miller LLC; Rakoczy Molino Mazzochi Siwik LLP
- Case Identification: Nexus Pharmaceuticals, Inc. v. Nevakar, Inc., et al., 1:22-cv-06030, D.N.J., filed 10/11/2022
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendants maintain regular and established places of business in the district and are expected to manufacture, market, and sell the accused product within the district.
- Core Dispute: Plaintiff alleges that Defendants’ ready-to-use ephedrine sulfate prefilled syringe product infringes a patent directed to stable, ready-to-use injectable ephedrine sulfate formulations.
- Technical Context: The technology concerns injectable pharmaceutical formulations of ephedrine sulfate, used to treat hypotension, that are provided in a stable, ready-to-use format to eliminate the need for on-site dilution, a process which can introduce clinical errors and contamination risks.
- Key Procedural History: The patent-in-suit was issued on the same day the complaint was filed, a fact which may be relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2019-05-16 | '752 Patent Priority Date (from Provisional Application) |
| 2022-04-22 | FDA Approval of NDA Supplement for Accused Product |
| 2022-10-11 | U.S. Patent No. 11,464,752 Issues |
| 2022-10-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,464,752 - "Compositions Comprising Ephedrine Or An Ephedrine Salt And Methods Of Making And Using Same"
The Invention Explained
- Problem Addressed: The patent’s background section states that all previously FDA-approved ephedrine sulfate formulations required dilution before administration to a patient, a step that is inconvenient, introduces delays, and creates a "significant and dangerous source of potential error in the clinical setting" (’752 Patent, col. 1:15-26). Furthermore, existing ready-to-use preparations of ephedrine sulfate were not known to be stable for more than 60 days (’752 Patent, col. 1:58-60).
- The Patented Solution: The invention is a premixed, "ready-to-use" pharmaceutical composition of ephedrine sulfate that does not require dilution prior to administration and remains stable after prolonged storage (’752 Patent, col. 2:50-60). The patent describes specific formulations, such as a 5 mg/mL ephedrine sulfate solution with sodium chloride in water, that maintain pH and concentration stability for extended periods (e.g., 12 months) without preservatives (’752 Patent, Abstract).
- Technical Importance: The invention provides a safer and more efficient therapeutic option for clinicians treating hypotension, particularly in emergency settings, by removing the risks of contamination and incorrect dosing associated with manual, on-site dilution (’752 Patent, col. 1:22-34).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶ 88).
- The essential elements of Claim 1 are:
- A pharmaceutical product comprising:
- a packaged syringe containing a sterilized ready-to-use ephedrine composition comprising:
- a packaged concentration of ephedrine sulfate of 5 mg/mL,
- 9 mg/mL sodium chloride,
- no preservative,
- water, and
- an initial pH level of about 4.5 to about 7; and
- having, after storage under specified conditions (25°C for 12 months or 40°C for 6 months):
- a pH level within 0.5 pH units of the initial pH level,
- an ephedrine sulfate concentration of at least 95% of the packaged concentration, and
- a bacterial endotoxin level not more than 7 EU/mg.
- The complaint reserves the right to assert other claims of the '752 patent (Compl. ¶ 82).
III. The Accused Instrumentality
Product Identification
- Defendants' ephedrine sulfate 25 mg/5 mL (5 mg/mL) solution in a 5 mL prefilled syringe, approved under NDA No. 213994 and referred to as "Defendants' Prefilled Syringe Product" (Compl. ¶¶ 2, 47).
Functionality and Market Context
- The accused product is described as a "sterile, shelf-stable, ready-to-use ephedrine sulfate composition" (Compl. ¶ 67).
- It is specifically alleged to be presented in a "5 mL single-dose prefilled syringe" and to contain "5 mg/mL ephedrine sulfate, 9 mg/mL sodium chloride, water with a pH of between 4.5 and 7, and no preservative" (Compl. ¶¶ 64, 67).
- The complaint alleges the product is shelf-stable for 6 and/or 12 months and will be marketed and sold in the U.S. by the Par Sterile Products business of Endo International plc for treating patients in a surgical setting (Compl. ¶¶ 67, 70-71).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'752 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A pharmaceutical product comprising: a packaged syringe containing a sterilized ready-to-use ephedrine composition comprising: | Defendants' product is a "5 mL single-dose prefilled syringe" containing a "sterile, shelf-stable, ready-to-use ephedrine sulfate composition." | ¶¶ 64, 67 | col. 45:13-16 |
| a packaged concentration of ephedrine sulfate of 5 mg/mL, | The accused product is alleged to contain "5 mg/mL ephedrine sulfate." | ¶67 | col. 45:30-32 |
| 9 mg/mL sodium chloride, | The accused product is alleged to contain "9 mg/mL sodium chloride." | ¶67 | col. 45:33 |
| no preservative, | The accused product is alleged to have "no preservative." | ¶67 | col. 45:34 |
| water, and | The accused product is alleged to contain "water." | ¶67 | col. 45:35 |
| an initial pH level of about 4.5 to about 7; and | The accused product is alleged to have "a pH of between 4.5 and 7." | ¶67 | col. 45:36-37 |
| having, after storage ... a pH level within 0.5 pH units of the initial pH level, an ephedrine sulfate concentration of at least 95% of the packaged concentration, and a bacterial endotoxin level not more than 7 EU/mg. | The complaint alleges on "information and belief" that the product is shelf-stable for 6 and/or 12 months and "meets each and every limitation of claim 1," but provides no specific data on its post-storage stability profile. | ¶¶ 67, 89 | col. 46:1-8 |
Identified Points of Contention
- Evidentiary Question: The complaint's allegations regarding the product's stability after storage—a key set of limitations in Claim 1—are made "on information and belief" (Compl. ¶ 89) without specific supporting data. A primary point of contention will be an evidentiary one: does Defendants' product actually exhibit the claimed stability for pH, concentration, and endotoxin levels after the specified storage periods? The contents of Defendants' NDA and the results of any future product testing will be central to resolving this question.
- Scope Questions: The complaint alleges the accused product has a pH "between 4.5 and 7," while the claim requires a pH of "about 4.5 to about 7" (Compl. ¶ 67; ’752 Patent, col. 45:37). While the overlap appears substantial, the construction of "about" is a classic litigation issue that raises the question of how much deviation from the explicit numerical range is permitted.
V. Key Claim Terms for Construction
The Term: "about"
- Context and Importance: This term modifies the numerical pH range ("about 4.5 to about 7") and is critical for defining the boundaries of literal infringement. Practitioners may focus on this term because its interpretation—whether it means precisely the stated numbers, allows for standard rounding, or covers a wider range—could determine the outcome of the infringement analysis for this quantitative limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification frequently uses "about" when defining ranges for various parameters, such as concentration ("about 1 mg/mL to about 10 mg/mL"), suggesting the patentee understood these values to be approximations rather than absolute endpoints (’752 Patent, col. 13:9-11).
- Evidence for a Narrower Interpretation: The patent’s examples report specific pH values for tested lots (e.g., 5.8, 5.5) and a tested range of 5.6-6.2 (’752 Patent, Table 2). A party may argue these specific embodiments should inform the meaning of "about," limiting it to a narrow band around the stated range that accounts only for minor measurement variability.
The Term: "ready-to-use"
- Context and Importance: This term is central to the patent's purported solution to the problems of dilution. Its construction is important because the infringement analysis depends on whether the accused prefilled syringe product is properly characterized as "ready-to-use" within the meaning of the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s background contrasts the invention with prior art requiring "ten-fold" dilution, which could support an interpretation that "ready-to-use" simply means that no such significant dilution step is required before administration (’752 Patent, col. 1:19-22).
- Evidence for a Narrower Interpretation: The patent explicitly states its formulations do "not require reconstitution or dilution prior to administration" (’752 Patent, col. 2:53-54). A party could argue this sets a strict standard, and that any required pre-administration manipulation, however minor, would place a product outside the scope of this term.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Defendants indirectly infringe by "actively, knowingly and intentionally aiding, abetting, directing, encouraging, or otherwise instructing third parties and knowingly inducing third parties, including contract manufacturers, to commit acts that constitute infringement" (Compl. ¶ 89).
Willful Infringement
- The willfulness allegation is based on alleged pre-suit and post-suit knowledge. The complaint alleges Defendants were aware of the patent's parent application during its prosecution and had knowledge of the allowed claims prior to issuance, and have been aware of the issued '752 patent since the day it issued, which was the date of filing (Compl. ¶¶ 79-80, 91).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: does Defendants’ prefilled syringe product, as described in its regulatory filings and in practice, actually meet the specific, quantitative stability limitations recited in Claim 1 regarding pH, concentration, and endotoxin levels after the required storage periods? The complaint's reliance on "information and belief" for these elements elevates the importance of discovery on the product's tested characteristics.
- A key legal question will be one of definitional scope: how should the term "about" be construed in the context of the claimed pH range of "about 4.5 to about 7"? The court's interpretation of this term will be critical in determining whether the accused product's alleged pH "between 4.5 and 7" falls within the bounds of the patent claim.
- A further question for any willfulness determination will be one of timing and knowledge: given that the patent issued on the same day the complaint was filed, can the Plaintiff establish that Defendants had the requisite knowledge of the patent's allowed claims before issuance and proceeded with conduct despite an objectively high likelihood of infringement?