DCT
2:23-cv-00116
Actelion Pharma Ltd v. Sun Pharmaceutical Industries Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Actelion Pharmaceuticals Ltd (Switzerland) and Actelion Pharmaceuticals US, Inc. (Delaware)
- Defendant: Sun Pharmaceutical Industries Limited (India) and Sun Pharmaceutical Industries, Inc. (Delaware)
- Plaintiff’s Counsel: Robinson Miller LLC
- Case Identification: 2:23-cv-00116, D.N.J., 01/10/2023
- Venue Allegations: Venue is alleged to be proper as to Defendant Sun Ltd. because it is a foreign entity subject to personal jurisdiction in the district, and as to Defendant Sun Inc. because it has a principal place of business in New Jersey and has committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant's submission of an Abbreviated New Drug Application (ANDA) for a generic version of Plaintiff's OPSUMIT® (macitentan) drug product constitutes an act of infringement of two U.S. patents covering the active pharmaceutical ingredient and its formulation.
- Technical Context: The technology relates to pharmaceutical compounds, specifically endothelin receptor antagonists, and stable formulations thereof for the treatment of pulmonary arterial hypertension (PAH).
- Key Procedural History: This action was initiated under the Hatch-Waxman Act following Defendant's notification to Plaintiff of its ANDA filing containing a Paragraph IV certification, which challenges the validity or asserts non-infringement of the patents-in-suit. The complaint notes that Defendant was allegedly aware of several prior consent judgments in which other generic drug manufacturers admitted that the claims of the '781 patent are valid and enforceable.
Case Timeline
| Date | Event |
|---|---|
| 2000-12-18 | U.S. Patent No. 7,094,781 Earliest Priority Date |
| 2005-09-12 | U.S. Patent No. 10,946,015 Earliest Priority Date |
| 2006-08-22 | U.S. Patent No. 7,094,781 Issued |
| 2013-10-18 | FDA grants approval for Plaintiff's OPSUMIT® (macitentan) |
| 2017-10-18 | Defendant allegedly submits ANDA No. 211123 to the FDA |
| 2021-03-16 | U.S. Patent No. 10,946,015 Issued |
| 2022-11-28 | Defendant sends Paragraph IV Notice Letter to Plaintiff |
| 2022-11-29 | Plaintiff receives Notice Letter |
| 2023-01-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,094,781 - "Sulfamides and Their Use as Endothelin Receptor Antagonists"
The Invention Explained
- Problem Addressed: The patent describes the role of endothelins as potent vasoconstrictors involved in various cardiovascular and inflammatory diseases. It notes that previously developed endothelin receptor antagonists possessed weaknesses, including "complex synthesis, low solubility, high molecular weight, poor pharmacokinetics, or safety problems" ('781 Patent, col. 1:58-62).
- The Patented Solution: The invention discloses a "new class of substituted pyrimidines" that function as endothelin receptor antagonists ('781 Patent, col. 2:2-4). These novel sulfamide-based compounds, defined by the general structure of Formula I, are designed to inhibit endothelin receptors, offering a new therapeutic approach to diseases like pulmonary hypertension ('781 Patent, Abstract; col. 1:8-14).
- Technical Importance: The invention provided a new chemical scaffold for endothelin receptor antagonists, enabling the development of compounds with tailored selectivity and potentially improved pharmacological properties compared to prior art compounds ('781 Patent, col. 2:61-67).
Key Claims at a Glance
- The complaint asserts independent claim 11 and dependent claims 1 and 5-9 (Compl. ¶49).
- Independent Claim 11 recites a specific compound:
- Propylsulfamic acid [5-(4-bromo-phenyl)-6-[2-(5-bromo-pyrimidin-2-yloxy)-ethoxy]-pyrimidin-4-yl]-amide.
U.S. Patent No. 10,946,015 - "Stable Pharmaceutical Compositions Comprising a Pyrimidine-Sulfamide"
The Invention Explained
- Problem Addressed: The patent addresses the need for a stable pharmaceutical formulation for the compound of Formula I (macitentan), which was being evaluated in clinical trials ('015 Patent, col. 1:55-59). Creating a viable drug product requires more than just an active ingredient; it requires a formulation that ensures stability, manufacturability, and proper delivery.
- The Patented Solution: The invention provides stable pharmaceutical compositions containing the active ingredient (macitentan) combined with a specific set of excipients within defined weight-percentage ranges. This includes particular types of fillers, disintegrants, surfactants, and lubricants designed to work together to create a stable oral dosage form, such as a tablet ('015 Patent, col. 1:62-col. 2:18, Abstract). The process for making such compositions is illustrated in flowcharts, such as the wet granulation process shown in Figure 5.
- Technical Importance: This technology is critical for the commercialization of the drug, as a stable formulation is essential for ensuring product shelf-life, consistent quality, and reliable therapeutic effect for patients ('015 Patent, col. 1:55-59).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 34, along with numerous dependent claims (Compl. ¶53).
- Independent Claim 1 recites a pharmaceutical composition comprising:
- The compound of formula I, in an amount of 1 to 50% by weight.
- A filler, in an amount of 10 to 95% by weight.
- A disintegrant, in an amount of 1 to 20% by weight.
- A surfactant, in an amount from 0.1 to 1% by weight, wherein the surfactant comprises a polysorbate.
- A lubricant, in an amount from 0.05 to 10% by weight.
- Independent Claim 34 is a similar composition claim with more specific definitions for the categories of excipients.
III. The Accused Instrumentality
Product Identification
- Defendant's generic macitentan 10 mg oral tablets, for which it filed ANDA No. 211123 ("the ANDA Product") (Compl. ¶13).
Functionality and Market Context
- The complaint alleges the ANDA Product contains macitentan as its active pharmaceutical ingredient (Compl. ¶50). The product is a generic equivalent of Plaintiff's OPSUMIT® drug, which is indicated for the treatment of pulmonary arterial hypertension (Compl. ¶¶13, 29). The filing of the ANDA itself is the statutory act of infringement under 35 U.S.C. § 271(e)(2) that gives rise to this lawsuit (Compl. ¶56). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,094,781 Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Propylsulfamic acid [5-(4-bromo-phenyl)-6-[2-(5-bromo-pyrimidin-2-yloxy)-ethoxy]-pyrimidin-4-yl]-amide | The complaint alleges that the active ingredient in the ANDA Product is macitentan, and that the chemical name for macitentan is the one recited in this claim. | ¶50-51 | col. 143:5-14 |
- Identified Points of Contention:
- Scope Questions: The primary question is one of identity: is the active ingredient in Defendant's ANDA Product the exact chemical compound named in Claim 11? Based on the complaint's direct allegations, a non-infringement defense on this point would appear to require evidence that Defendant's compound is structurally different.
- Technical Questions: Assuming the ANDA product contains macitentan, the infringement analysis for the '781 patent appears straightforward. The central dispute will likely shift to the patent's validity.
U.S. Patent No. 10,946,015 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) the compound of the formula I ... in a total amount of 1 to 50% in weight | The complaint alleges the ANDA Product infringes but does not provide the specific weight percentage of the active ingredient. | ¶53, ¶56 | col. 29:21-24 |
| b) filler, in an amount of 10 to 95% in weight | The complaint alleges the ANDA Product infringes but does not identify the specific filler(s) or their weight percentage. | ¶53, ¶56 | col. 29:25-27 |
| c) disintegrant, in an amount of 1 to 20% in weight | The complaint alleges the ANDA Product infringes but does not identify the specific disintegrant(s) or their weight percentage. | ¶53, ¶56 | col. 29:28-30 |
| d) surfactant, in an amount from 0.1 to 1% in weight, wherein the surfactant comprises a polysorbate | The complaint alleges the ANDA Product infringes but does not identify the specific surfactant(s) or their weight percentage. | ¶53, ¶56 | col. 29:31-33 |
| e) lubricant, in an amount from 0.05 to 10% in weight | The complaint alleges the ANDA Product infringes but does not identify the specific lubricant(s) or their weight percentage. | ¶53, ¶56 | col. 30:1-3 |
- Identified Points of Contention:
- Scope Questions: Do the specific excipients used in Defendant's ANDA Product fall within the claimed categories (e.g., does its chosen surfactant "comprise a polysorbate")?
- Technical Questions: The complaint does not provide sufficient detail for analysis of Defendant's specific formulation. A key evidentiary question will be whether the precise weight percentages of each component in the ANDA Product fall within the ranges required by the asserted claims. The infringement analysis will depend entirely on the contents of the confidential ANDA filing.
V. Key Claim Terms for Construction
- Patent: U.S. Patent No. 10,946,015
- The Term: "surfactant ... comprises a polysorbate"
- Context and Importance: The definition of this term is critical because infringement of the formulation patent hinges on whether Defendant's product meets every limitation. If Defendant's surfactant is not a "polysorbate" as construed by the court, or if it uses a polysorbate outside the claimed weight range, there may be no literal infringement of this claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists "polysorbates" as one example among a long list of potential surfactants, which could suggest the categories are not intended to be narrowly limited ('015 Patent, col. 5:20-28).
- Evidence for a Narrower Interpretation: The claim specifically singles out "polysorbate" from the longer list in the specification. A party could argue this demonstrates a clear intent to limit the claim to this specific class of surfactant. Furthermore, the specification mentions "polysorbate 80" as a specific example, which could be used to argue the term should be construed to cover only structures closely related to that embodiment ('015 Patent, col. 5:32-33).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that if Defendant's ANDA Product is approved and launched, its sale will induce infringement by patients and physicians who use the drug for its intended, patented purpose (Compl. ¶63). This is relevant to the method of treatment claims in the '015 patent (e.g., claim 26).
- Willful Infringement: The complaint alleges willfulness based on Defendant's alleged pre-suit knowledge of the patents-in-suit (Compl. ¶¶35-36, 58). Crucially, it fortifies this allegation by asserting that Defendant was aware of multiple consent judgments from prior litigations where other companies admitted the '781 patent is valid and enforceable, suggesting Defendant proceeded with its own at-risk launch in the face of this knowledge (Compl. ¶¶41-48). The complaint also highlights Defendant's alleged failure to comply with its duty of care in its Paragraph IV certification (Compl. ¶¶52, 65).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of validity: given the direct allegation of infringement of the '781 compound patent, Defendant's primary defense will likely be to argue that the patent is invalid (e.g., for obviousness). The extent to which prior litigation outcomes affect this challenge, particularly on the issue of willfulness, will be a critical question.
- A key evidentiary question will be one of compositional identity: does the precise formulation of Defendant's ANDA product, including the specific identity and weight percentages of its excipients, fall within the literal scope of the claims of the '015 formulation patent?
- A third question will focus on objective recklessness: did Defendant's decision to file its ANDA, particularly in light of its alleged knowledge of prior consent judgments upholding the '781 patent's validity, constitute willful infringement, potentially exposing it to enhanced damages and attorneys' fees?