DCT

2:24-cv-10734

Cassiopea Spa v. Aurobindo Pharma Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-10734, D.N.J., 09/03/2025
  • Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant Aurobindo Pharma USA, Inc. is a corporation with a regular and established place of business in the state.
  • Core Dispute: Plaintiffs allege that Defendants' submission of an Abbreviated New Drug Application (ANDA) to market a generic version of the acne treatment WINLEVI® infringes seven U.S. patents covering crystalline forms of the active ingredient clascoterone, pharmaceutical compositions containing them, and methods of their use.
  • Technical Context: The technology concerns distinct crystalline polymorphs of the steroid cortexolone-17α-propionate (clascoterone), which are formulated into a topical cream for treating skin conditions like acne vulgaris.
  • Key Procedural History: This action was initiated under the Hatch-Waxman Act following Defendants' notice to Plaintiffs of their ANDA filing with a Paragraph IV certification, asserting non-infringement, invalidity, or unenforceability of the asserted patents. The current filing is a First Amended Complaint, adding allegations regarding U.S. Patent No. 12,337,002 after a second notice letter from Defendants.

Case Timeline

Date Event
2007-08-03 Priority Date for all Patents-in-Suit
2014-07-22 U.S. Patent No. 8,785,427 Issues
2016-09-06 U.S. Patent No. 9,433,628 Issues
2016-11-08 U.S. Patent No. 9,486,458 Issues
2018-12-25 U.S. Patent No. 10,159,682 Issues
2020-08-26 FDA approves Plaintiffs' WINLEVI® drug product
2021-12-28 U.S. Patent No. 11,207,332 Issues
2024-03-26 U.S. Patent No. 11,938,141 Issues
2024-10-11 Defendants send first Notice Letter regarding ANDA filing
2024-11-25 Plaintiffs file original complaint
2025-06-24 U.S. Patent No. 12,337,002 Issues
2025-08-22 Defendants send second Notice Letter regarding the '002 patent
2025-09-03 Plaintiffs file First Amended Complaint

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

U.S. Patent No. 8,785,427 - "Enzymatic process for obtaining 17 alpha-monoesters of cortexolone and/or its 9,11-dehydroderivatives"

  • Patent Identification: U.S. Patent No. 8,785,427, issued July 22, 2014.

The Invention Explained

  • Problem Addressed: The patent family describes prior art methods for creating 17α-monoesters of cortexolone as producing unstable compounds that required difficult and complex purification steps, such as column chromatography, making them unsuitable for industrial-scale production (’628 Patent, col. 2:1-12).
  • The Patented Solution: The inventors discovered not only an improved enzymatic process for creating the active ingredient but also that the resulting compound, cortexolone-17α-propionate (clascoterone), could be prepared in distinct, stable crystalline forms (’628 Patent, col. 7:31-35). These specific solid-state forms, such as "crystalline form III," can be characterized by analytical techniques like X-ray diffraction (DRX) and are suitable for inclusion in pharmaceutical formulations (’427 Patent, claim 20).
  • Technical Importance: Isolating and characterizing specific crystalline forms of an active pharmaceutical ingredient is critical for ensuring product stability, consistent dissolution rates, and predictable bioavailability in a final drug product (Compl. ¶76).

Key Claims at a Glance

  • The complaint asserts claims 20, 24, and 25 (Compl. ¶91). Claim 20 is the key product claim.
  • Claim 20:
    • A crystalline form III of cortexolone-17α-propionate
    • having a DRX spectrum as represented in FIG. 7 or 10 or 13
    • and a DSC spectrum as represented in FIG. 8 or 11 or 14
    • and an IR spectrum as represented in FIG. 9 or 12 or 15.
  • The complaint explicitly asserts dependent claims 24 (a pharmaceutical composition) and 25 (a cream, gel, ointment, etc.) (Compl. ¶91).

U.S. Patent No. 9,433,628 - "Enzymatic process for obtaining 17α-monoesters of cortexolone and/or its 9,11-dehydroderivatives"

  • Patent Identification: U.S. Patent No. 9,433,628, issued September 6, 2016.

The Invention Explained

  • Problem Addressed: As with the ’427 Patent, the background addresses the difficulty in producing stable and pure 17α-monoesters of cortexolone (’628 Patent, col. 2:1-12).
  • The Patented Solution: This patent claims another distinct crystalline form of clascoterone, "crystalline form IV," which is a solvate form containing water molecules within its crystal structure (’628 Patent, col. 9:25-27). The patent describes methods for obtaining this form, such as by crystallization from a propylene glycol/water mixture, and formulating it into a cream where it may be present alongside solubilized clascoterone (’628 Patent, col. 9:27-40; col. 12:8-24). The chemical structure of the active ingredient, clascoterone, is depicted in the complaint (Compl. ¶53).
  • Technical Importance: The discovery of a stable solvate (hydrated) crystalline form provides an alternative solid form for formulation, which can have different properties and may arise during specific aqueous-based manufacturing processes (’628 Patent, col. 9:32-40).

Key Claims at a Glance

  • The complaint asserts claims 2, 3, 14, 17, and 18 (Compl. ¶113). Claims 2, 3, and 14 are independent.
  • Claim 2 (Product): Crystalline form IV of cortexolone-17a-propionate characterized by XRPD peaks at about 4.8, 12.9, 14.4, 15.8, 16, 19.3, and 19.5 degrees 2theta.
  • Claim 3 (Process): A process for preparing crystalline form IV... comprising crystallizing... from a propylene glycol/water or polyethylene glycol/water mixture.
  • Claim 14 (Composition): A pharmaceutical composition comprising crystalline form IV of cortexolone-17a-propionate, water, and at least one physiologically acceptable excipient.
  • The complaint asserts dependent claims 17 (cream) and 18 (further comprising solubilized cortexolone-17a-propionate) (Compl. ¶113).

Multi-Patent Capsules

  • U.S. Patent No. 9,486,458: "Enzymatic process for obtaining 17 ALPHA-MONOESTERS OF CORTEXOLONE AND/OR ITS 9,11-DEHYDRODERIVATIVES," issued November 8, 2016.

    • Technology Synopsis: This patent claims methods of treating skin pathologies, including acne, by administering an effective amount of crystalline form IV of clascoterone, which is characterized by specific XRPD peaks (’458 Patent, col. 14:15-26). The claimed methods include topical application of a composition containing this crystalline form (’458 Patent, col. 14:27-33).
    • Asserted Claims: 14, 15, 16, 20, 21, and 23 (Compl. ¶138).
    • Accused Features: The administration of Defendants' ANDA product according to its proposed label for the treatment of acne (Compl. ¶¶141-142).

  • U.S. Patent No. 10,159,682: "ENZYMATIC PROCESS FOR OBTAINING 17 ALPHA-MONOESTERS OF CORTEXOLONE AND/OR ITS 9,11-DEHYDRODERIVATIVES," issued December 25, 2018.

    • Technology Synopsis: This patent claims methods for treating skin pathologies, including acne, by administering a composition that contains crystalline form III of clascoterone (’682 Patent, col. 13:26-44). The claims further specify compositions that also contain solubilized clascoterone and other crystalline forms, such as form IV, and specify that the total concentration of the active ingredient is 1% by weight (’682 Patent, col. 14:17-26).
    • Asserted Claims: 7–9, 13–16, and 20 (Compl. ¶162).
    • Accused Features: The administration of Defendants' ANDA product, which is alleged to contain crystalline form III and other forms in a 1% cream, according to its proposed label for treating acne (Compl. ¶¶165-166).

  • U.S. Patent No. 11,207,332: "ENZYMATIC PROCESS FOR OBTAINING 17 α-MONOESTERS OF CORTEXOLONE AND/OR ITS 9,11-DEHYDRODERIVATIVES," issued December 28, 2021.

    • Technology Synopsis: This patent claims pharmaceutical compositions that comprise a combination of both crystalline form III and crystalline form IV of clascoterone (’332 Patent, col. 11:47-67). The patent also claims methods of treating acne by administering this combination composition (’332 Patent, col. 13:1-20).
    • Asserted Claims: 1–3, 5, 7, 8, 10, and 17–20 (Compl. ¶185).
    • Accused Features: Defendants' ANDA product itself, which is alleged to be a cream formulation containing both crystalline forms III and IV of clascoterone, and the administration of that product to treat acne (Compl. ¶¶188-189).

  • U.S. Patent No. 11,938,141: "ENZYMATIC PROCESS FOR OBTAINING 17 ALPHA-MONOESTERS OF CORTEXOLONE AND/OR ITS 9,11-DEHYDRODERIVATIVES," issued March 26, 2024.

    • Technology Synopsis: This patent claims a topical composition comprising at least two different crystalline forms of clascoterone selected from Forms I, II, III, and IV (’141 Patent, col. 11:47-66). The claims specifically cover compositions comprising both Form III and Form IV (’141 Patent, col. 12:9-11).
    • Asserted Claims: 1, 4, 5, 6, and 7 (Compl. ¶209).
    • Accused Features: Defendants' ANDA product, which is alleged to contain a combination of crystalline forms III and IV (Compl. ¶212).

  • U.S. Patent No. 12,337,002: "ENZYMATIC PROCESS FOR OBTAINING 17 ALPHA-MONOESTERS OF CORTEXOLONE AND/OR ITS 9,11-DEHYDRODERIVATIVES," issued June 24, 2025.

    • Technology Synopsis: This patent claims a pharmaceutical composition comprising clascoterone in at least one of polymorphic forms I, III, or IV, in combination with a specific list of excipients including propylene glycol, cetyl alcohol, and others (’002 Patent, col. 12:1-12). The claims specifically cover a cream formulation containing this combination (’002 Patent, col. 12:43-45).
    • Asserted Claims: 1–4, and 16 (Compl. ¶232).
    • Accused Features: Defendants' ANDA product, which is alleged to be a cream containing clascoterone forms III and IV along with the recited excipients (Compl. ¶235).

III. The Accused Instrumentality

Product Identification

Defendants' ANDA No. 219862 product ("Aurobindo's ANDA Product"), which is a generic version of Plaintiffs' WINLEVI® (1% clascoterone topical cream) (Compl. ¶¶1, 3, 72).

Functionality and Market Context

The accused product is a 1% clascoterone cream formulation intended for the topical treatment of acne vulgaris in patients 12 years of age and older (Compl. ¶¶72, 79). The complaint alleges that by filing an ANDA and relying on the WINLEVI® safety and efficacy data, Defendants are seeking to market a bioequivalent product that will compete directly with WINLEVI® upon FDA approval (Compl. ¶¶70, 77). The complaint alleges the product contains crystalline form IV of clascoterone and, based on its asserted bioequivalence to WINLEVI®, that it also necessarily contains crystalline form III and solubilized clascoterone (Compl. ¶¶73, 78).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,785,427 Infringement Allegations

Claim Element (from Claim 20) Alleged Infringing Functionality Complaint Citation Patent Citation
Crystalline form III of cortexolone-17α-propionate The complaint alleges that Aurobindo's ANDA Product comprises crystalline form III of clascoterone, based on its purported bioequivalence to WINLEVI®, which contains Form III. ¶¶78, 94 col. 8:12-20
having a DRX spectrum as represented in FIG. 7 or 10 or 13 The product is alleged to have the characteristic analytical spectra for Form III. ¶94 col. 8:12-20
and a DSC spectrum as represented in FIG. 8 or 11 or 14 The product is alleged to have the characteristic analytical spectra for Form III. ¶94 col. 8:12-20
and an IR spectrum as represented in FIG. 9 or 12 or 15. The product is alleged to have the characteristic analytical spectra for Form III. ¶94 col. 8:12-20
  • Identified Points of Contention:
    • Evidentiary Questions: The central dispute appears to be factual: does Aurobindo's product contain "crystalline form III" as claimed? The complaint's allegation rests on an inference that bioequivalence to WINLEVI® requires the presence of the same crystalline forms (form III and form IV) found in the branded product (Compl. ¶78). This raises the question of what direct evidence Plaintiffs will present to prove the presence of the specific polymorph defined by the patent's figures.

U.S. Patent No. 9,433,628 Infringement Allegations

Claim Element (from Independent Claim 14) Alleged Infringing Functionality Complaint Citation Patent Citation
A pharmaceutical composition comprising crystalline form IV of cortexolone-17a-propionate, Aurobindo's ANDA Product is alleged to be a pharmaceutical composition comprising crystalline form IV of clascoterone. ¶74 col. 9:25-27
water, The product is described as a cream formulation, which contains water. ¶¶74, 78 col. 12:8-13
and at least one physiologically acceptable excipient. The product is a cream formulation containing excipients. ¶74 col. 12:8-13
From dependent claim 18: wherein the composition further comprises solubilized cortexolone-17a-propionate. Based on the composition of WINLEVI® and the requirements for transdermal absorption, the complaint alleges Aurobindo's product also contains solubilized clascoterone. ¶78, 116 col. 12:8-24
  • Identified Points of Contention:
    • Scope Questions: The construction of "about" in the claims defining crystalline form IV by its XRPD peaks may become a point of contention if the accused product's peaks deviate from the recited values (Claim 2).
    • Technical Questions: Similar to the '427 patent, a key question will be proving the composition of the accused product. The complaint alleges the presence of "solubilized" clascoterone (required by claim 18) based on inference from the properties of WINLEVI® and the general requirements for transdermal absorption (Compl. ¶78). The evidentiary basis for this allegation may be a focus of discovery.

V. Key Claim Terms for Construction

  • The Term: "about" (from '628 Patent, claim 2)

  • Context and Importance: This term modifies the numerical values of the X-ray powder diffraction (XRPD) peaks used to define crystalline form IV. The scope of "about" is critical because it determines how much variability is permitted in an XRPD measurement for a product to still fall within the claim's definition. Practitioners may focus on this term because minor variations in manufacturing or analytical equipment can cause slight shifts in measured peak locations.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term "about" is used consistently throughout the patent family when reciting analytical peak data, which may suggest the patentee intended to claim the crystalline form without being strictly limited to the exact numerical values disclosed.
    • Evidence for a Narrower Interpretation: The patent provides specific figures (e.g., FIG. 28) depicting the DRX spectrum. A party could argue that "about" should be construed narrowly to cover only minor instrumental or rounding variations that do not change the fundamental character of the spectrum shown in the figures.

  • The Term: "solubilized cortexolone-17a-propionate" (from '628 Patent, claim 18)

  • Context and Importance: This term, recited in a dependent claim, requires the accused composition to contain not only crystalline form IV but also a portion of the active ingredient that is dissolved in the cream base. The definition is important because it adds a functional requirement to the composition. Infringement of this claim will hinge on whether the accused product contains a detectable amount of dissolved clascoterone in addition to the solid crystalline form.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's Example 8 describes creating a cream that results in "a fraction of an active ingredient dissolved in the formulation vehicle and a non-dissolved fraction." This may support a construction where any detectable amount of dissolved drug, created intentionally or as an inherent result of the formulation, meets the limitation. (’628 Patent, col. 12:15-19).
    • Evidence for a Narrower Interpretation: A defendant might argue that "solubilized" implies an amount sufficient to have a therapeutic effect or to materially alter the properties of the formulation, not merely trace amounts that may dissolve incidentally. The purpose of having both forms is to achieve certain skin permeation characteristics, which could suggest a functional requirement for the term. (Compl. ¶76).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement of the method of use patents (’458, ’682, ’332 patents). The basis is the allegation that Defendants' proposed product label and prescribing information will actively and knowingly instruct healthcare providers and patients to administer the ANDA product in a manner that directly infringes the claimed methods of treating acne. (Compl. ¶¶145, 168, 192).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The complaint claims that Defendants have acted with full knowledge of the patents-in-suit and without a reasonable basis for believing their actions would not constitute infringement, citing Defendants' Paragraph IV certifications as evidence of this knowledge. (Compl. ¶¶100, 124, 148, 171, 195, 218, 241).

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

  • A central issue will be one of evidentiary proof: what factual evidence will Plaintiffs produce to demonstrate that Defendants' generic product contains the specific "crystalline form III" of clascoterone, an allegation the complaint currently supports primarily through an inference based on the product's purported bioequivalence to WINLEVI®?
  • A key question will be one of compositional identity: does Defendants' product, as formulated, contain not only the crystalline forms of clascoterone but also a "solubilized" portion of the drug, as required by claims in the '628 patent and others, and what level of proof is required to establish the presence of both solid and dissolved states within the cream matrix?
  • The case may also turn on a question of definitional scope: how broadly will the term "about," used to define the patented crystalline forms by their analytical peak locations, be construed, and will the measured characteristics of Defendants' product fall within that scope?