DCT

2:11-cv-01295

Nycomed US Inc v. Graceway Pharma LLC

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:11-cv-01295, D.N.J., 03/29/2011
  • Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendants transact business in the district and have filed a related patent infringement action against Plaintiff in the same district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that 22 patents owned or licensed by Defendants related to pharmaceutical creams containing the drug imiquimod are invalid and not infringed by Plaintiff's Imiquimod Cream 5% product.
  • Technical Context: The technology involves pharmaceutical formulations, specifically topical creams containing imiquimod, an immune response modifier, with a focus on methods for improving the drug's stability and minimizing impurity formation over time.
  • Key Procedural History: The complaint alleges that this action arises from a broader dispute, referencing a prior lawsuit filed by Defendants against Plaintiff on February 23, 2010, concerning a related patent (U.S. Patent No. 7,655,672). It further alleges that Defendants filed 27 continuation applications based on the parent '672 patent, requested accelerated examination for them, and that 21 of those applications issued as patents now asserted in this case. Additionally, the complaint notes that Plaintiff received a demand letter from Defendant Graceway on April 23, 2010, accusing it of infringing another of the patents-in-suit (U.S. Patent No. 7,696,159).

Case Timeline

Date Event
2003-03-25 Patent Priority Date (U.S. Patent No. 7,696,159)
2004-12-17 Patent Priority Date (All other patents-in-suit)
2010-01-29 Start of period when 27 related patent applications were filed
2010-02-01 End of period when 27 related patent applications were filed
2010-02-02 Issue Date of U.S. Patent No. 7,655,672 (related patent)
2010-02-23 Defendants file prior infringement suit against Nycomed
2010-04-13 Issue Date of U.S. Patent No. 7,696,159
2010-04-23 Nycomed receives demand letter from Graceway re: ’159 Patent
2011-03-08 Issue Date of U.S. Patent Nos. 7,902,209, ’210, ’211, ’212, ’213, ’214, ’215, ’216, ’242, ’243, ’244, ’245, ’246
2011-03-15 Issue Date of U.S. Patent Nos. 7,906,524, ’525, ’526, ’527, ’543
2011-03-29 Issue Date of U.S. Patent Nos. 7,915,277, ’278, ’279
2011-03-29 Complaint Filing Date

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

U.S. Patent No. 7,902,209 - "Method of Preparing a Pharmaceutical Cream and Minimizing Imiquimod Impurity Formation," Issued March 8, 2011

The Invention Explained

  • Problem Addressed: The patent’s background section describes that pharmaceutical formulations containing immune response modifier (IRM) compounds like imiquimod can suffer from chemical and physical instability, which can reduce the product's shelf life and jeopardize regulatory approval (U.S. Patent No. 7902209, col. 1:66-2:9).
  • The Patented Solution: The invention is a method for preparing a stable imiquimod cream by using a specific type of oleic acid. The method involves formulating the cream with an oleic acid component that is highly pure—containing at least 80% oleic acid and having low levels of polar impurities, such as a peroxide value no greater than 5. This use of a "super refined" oleic acid is claimed to minimize the formation of imiquimod-derived impurities during storage compared to formulations using standard "compendial grade" oleic acid (’209 Patent, col. 2:10-24; col. 5:10-24).
  • Technical Importance: For topical pharmaceuticals, ensuring long-term stability of the active ingredient is critical for maintaining potency, ensuring safety, and meeting regulatory requirements for shelf life.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment regarding "any valid claim" and "Each and every claim" of the patent (Compl. ¶¶41, 45). Independent claim 1 is representative.
  • Independent Claim 1 of the ’209 Patent recites:
    • A method of preparing a pharmaceutical cream formulated with imiquimod and minimizing the formation of imiquimod impurities during storage.
    • The method comprises steps of (a) preparing a water phase, (b) preparing an oil phase containing imiquimod and a specific oleic acid component, (c) combining the phases, (d) homogenizing the emulsion, (e) storing the cream for at least two months, and (f) minimizing impurity formation.
    • The oleic acid component is defined as having at least about 80% oleic acid, a peroxide value of no more than 5, and less than about 1% polar impurities.
    • The "minimizing" step is defined relative to an identical cream formulated with "compendial grade oleic acid."

U.S. Patent No. 7,902,210 - "Reduction of Imiquimod Impurities at Two Months Using Refined Oleic Acid," Issued March 8, 2011

The Invention Explained

  • Problem Addressed: As with the '209 Patent, this patent addresses the problem of imiquimod degradation and impurity formation in topical cream formulations, which impairs stability and reduces shelf life (U.S. Patent No. 7902210, col. 1:66-2:9).
  • The Patented Solution: The invention is directed to the resulting stable pharmaceutical cream itself, rather than the method of making it. The patent claims a topical cream containing imiquimod and a highly refined oleic acid component (defined by low polar impurities and a low peroxide value). This composition is characterized by its superior stability, defined as having a significantly lower amount of imiquimod impurities after two months of storage when compared to a cream made with standard oleic acid ('210 Patent, col. 2:10-24, Abstract).
  • Technical Importance: The invention provides a stable pharmaceutical product with a predictable and extended shelf life, which is a key objective in pharmaceutical development.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment regarding "any valid claim" and "Each and every claim" of the patent (Compl. ¶¶49, 53). Independent claim 1 is representative.
  • Independent Claim 1 of the ’210 Patent recites:
    • A pharmaceutical cream formulated with imiquimod.
    • The cream comprises imiquimod, a pharmaceutically acceptable vehicle including an oleic acid component with specific purity characteristics (at least 80% oleic acid, peroxide value no more than 5, less than 1% polar impurities).
    • The cream is defined by a performance characteristic: the amount of imiquimod impurities formed after two months of storage is "about 8 fold less" than the amount formed in an identical cream made with "compendial grade oleic acid."

Multi-Patent Capsule: U.S. Patent No. 7,902,211

  • Patent Identification: U.S. Patent No. 7902211, "Method of Inducing Interferon Biosynthesis," Issued March 8, 2011 (Compl. ¶10).
  • Technology Synopsis: This patent claims a method of inducing interferon biosynthesis in a subject by applying a stable imiquimod cream. The stability is achieved by formulating the cream with a refined oleic acid component having low levels of polar impurities, which ensures a greater amount of active imiquimod remains available over time compared to creams made with standard oleic acid (U.S. Patent No. 7,902,211, col. 5:14-61).
  • Asserted Claims: All claims (Compl. ¶¶57, 61).
  • Accused Features: Nycomed’s Imiquimod Cream 5% product (Compl. ¶¶33, 38).

Multi-Patent Capsule: U.S. Patent No. 7,696,159

  • Patent Identification: U.S. Patent No. 7696159, "Treatment for Basal Cell Carcinoma," Issued April 13, 2010 (Compl. ¶29).
  • Technology Synopsis: This patent claims a method of treating basal cell carcinoma by administering an immune response modifier (IRM) compound, such as imiquimod. The method is defined by a specific treatment cycle that includes "at least two consecutive days in which the IRM compound is administered and at least one day in which the IRM compound is not administered," such as a five-days-on, two-days-off weekly regimen (U.S. Patent No. 7,696,159, Abstract; col. 2:13-22).
  • Asserted Claims: All claims (Compl. ¶¶209, 213).
  • Accused Features: Nycomed’s Imiquimod Cream 5% product (Compl. ¶¶33, 38).

Editor's Note: Analysis of the remaining 18 patents-in-suit is omitted for brevity but would follow the Multi-Patent Capsule format.

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Plaintiff Nycomed’s "Imiquimod Cream 5% product" (Compl. ¶33, ¶38).

Functionality and Market Context

The complaint does not provide specific technical details regarding the formulation of its Imiquimod Cream 5% product, such as its excipients or the grade of oleic acid used. The allegations suggest the product is a generic version of a topical cream marketed by the Defendants and is intended for therapeutic use, thereby creating the legal controversy over potential infringement (Compl. ¶¶33, 37-38).

IV. Analysis of Infringement Allegations

The complaint, being an action for declaratory judgment of non-infringement, does not provide an affirmative infringement theory or claim chart for analysis. It alleges non-infringement in conclusory terms for each of the patents-in-suit (Compl. ¶¶41, 49, 57, etc.). The complaint's purpose is to compel the Defendants (as patent holders) to articulate and prove their infringement contentions before the court.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

  • The Term: "an amount of imiquimod impurities" (’210 Patent, claim 1)

  • Context and Importance: This term is central to the infringement analysis for the product-focused patents. Infringement hinges on a quantitative comparison of the level of impurities in the accused product versus a hypothetical comparator cream. Practitioners may focus on this term because the definition and method of measurement for "impurities" will directly determine whether the claimed stability threshold is met.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claims do not specify which chemical species constitute "impurities," which may support an interpretation including any degradation product of imiquimod.
    • Evidence for a Narrower Interpretation: The specification provides a detailed High Performance Liquid Chromatography (HPLC) test method for analyzing impurities, which could be argued to implicitly define the scope of the term to only those impurities detectable by that specific method ('210 Patent, col. 13:42-14:1).

  • The Term: "compendial grade oleic acid" (’209 Patent, claim 1; ’210 Patent, claim 1)

  • Context and Importance: This term defines the baseline comparator against which the claimed invention's performance (i.e., reduced impurity formation) is measured. The precise technical specifications of this hypothetical "compendial grade" material are critical to determining whether the claimed improvement is achieved by an accused product.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term "compendial" generally refers to standards set by official pharmacopoeias. The specification explicitly references the European Pharmacopoeia, suggesting the term could encompass any oleic acid meeting that standard ('209 Patent, col. 9:16-19).
    • Evidence for a Narrower Interpretation: The patent's examples use a specific "Oleic acid, NF" as the comparator ('209 Patent, Table 1, Cream A and B). A party could argue that this specific embodiment limits the scope of "compendial grade" to material with the properties of the one actually tested and disclosed.

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

  • A central issue will be one of patentability and scope: The complaint alleges that Defendants obtained over 20 related patents from a single parent application via accelerated examination, all sharing the same specification. This raises a key validity question for the court: can this large family of patents withstand challenges based on obviousness-type double patenting and written description, and to what extent do the claims of each patent carve out a distinct and non-obvious invention from the others and the prior art?

  • A key evidentiary question will be one of technical comparison: As this is a declaratory judgment action, the complaint does not detail the accused product's formulation. The case will therefore turn on the evidence presented regarding the precise technical characteristics of Nycomed's Imiquimod Cream 5% product. The central factual dispute will be whether Nycomed's specific formulation, particularly the purity of its oleic acid and the resultant level of imiquimod impurities over time, falls within the quantitative limitations recited in the asserted claims.