DCT

3:17-cv-13819

Patheon Softgels Inc v. Apotex Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:17-cv-13819, D.N.J., 12/29/2017
  • Venue Allegations: Plaintiffs allege venue is proper in the District of New Jersey because Apotex Inc. is a foreign corporation, Apotex Corp. has a permanent and continuous business presence in the district, and both defendants have previously consented to jurisdiction and venue in the district. It is also alleged that the filing of the ANDA will cause foreseeable harm to Plaintiff Bionpharma, which is headquartered in New Jersey.
  • Core Dispute: Plaintiffs allege that Defendants’ filing of an Abbreviated New Drug Application (ANDA) to market a generic version of Plaintiffs' over-the-counter naproxen sodium softgel capsules constitutes an act of patent infringement under the Hatch-Waxman Act.
  • Technical Context: The technology concerns pharmaceutical solvent systems designed to enhance the solubility of active ingredients, like naproxen sodium, in liquid-filled soft gelatin capsules to improve stability and bioavailability.
  • Key Procedural History: The litigation was triggered by Apotex’s submission of ANDA No. 210325 to the FDA and its subsequent sending of a Paragraph IV certification notice letter to Plaintiffs on or about November 15, 2017. The letter certified that the patents-in-suit are invalid, unenforceable, or will not be infringed by the proposed generic product. The patents-in-suit are listed in the FDA's "Orange Book" in connection with Bionpharma's NDA No. 021920. Both asserted patents are subject to a terminal disclaimer.

Case Timeline

Date Event
2005-03-03 Priority Date for U.S. Patent No. 9,693,978
2005-03-08 Priority Date for U.S. Patent No. 9,693,979
2017-07-04 U.S. Patent Nos. 9,693,978 and 9,693,979 Issue Date
2017-11-15 Apotex sends Paragraph IV Notice Letters to Plaintiffs
2017-12-29 Complaint Filing Date

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

U.S. Patent No. 9,693,978 - Solvent System for Enhancing the Solubility of Pharmaceutical Agents

  • Patent Identification: U.S. Patent No. 9,693,978, issued July 4, 2017 (’978 Patent, p. 1; Compl. ¶7).

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of creating concentrated liquid solutions of drugs for softgel capsules. Prior methods that converted a drug into its salt form to increase solubility could cause an unwanted reaction between the resulting drug anion and polyethylene glycol (PEG), a common solvent, to form PEG esters. This reaction reduces the amount of available pharmaceutical agent. (’978 Patent, col. 2:25-30).
  • The Patented Solution: The invention uses a "de-ionizing agent" (such as a weak organic acid) in a formulation that already contains the salt form of a drug (e.g., naproxen sodium). This agent causes partial neutralization of the drug salt, which the patent asserts enhances bioavailability while minimizing the formation of the undesirable PEG esters. The final formulation comprises the drug salt, the de-ionizing agent, polyethylene glycol, and water. (’978 Patent, Abstract; col. 2:41-52).
  • Technical Importance: This approach allows for stable, concentrated liquid drug formulations in softgels, which can offer faster and more uniform drug absorption than suspensions, while mitigating the chemical degradation that can reduce drug efficacy. (’978 Patent, col. 1:41-49, col. 2:30-39).

Key Claims at a Glance

  • The complaint asserts infringement of one or more unspecified claims of the ’978 patent (Compl. ¶37). Independent claims of the patent include 1, 8, 10, 18, 20, and 21.
  • The essential elements of independent claim 1 are:
    • A pharmaceutical composition comprising a soft gelatin capsule comprising a fill material comprising:
    • (a) a naproxen salt;
    • (b) about 5% lactic acid by weight of the fill material; and
    • (c) polyethylene glycol.
      (’978 Patent, col. 9:62-67).
  • The complaint does not explicitly reserve the right to assert dependent claims, but the general allegation of infringing "one or more claims" implicitly does so.

U.S. Patent No. 9,693,979 - Liquid Dosage Forms of Sodium Naproxen

  • Patent Identification: U.S. Patent No. 9,693,979, issued July 4, 2017 (’979 Patent, p. 1; Compl. ¶9).

The Invention Explained

  • Problem Addressed: As a divisional of the application leading to the ’978 patent, the ’979 patent addresses the same technical problem: creating stable, concentrated liquid formulations of naproxen for softgels while avoiding the formation of PEG esters that can reduce the amount of active drug. (’979 Patent, col. 2:23-35).
  • The Patented Solution: The invention is a liquid matrix within a softgel capsule that comprises naproxen sodium, a de-ionizing agent (such as lactic acid), polyethylene glycol, and, critically, one or more "solubilizers." The patent identifies these solubilizers as "polyvinylpyrrolidone, propylene glycol, or a combination thereof." (’979 Patent, Abstract; col. 2:58-69).
  • Technical Importance: The claimed solution provides another specific formulation for creating stable, bioavailable liquid dosages of naproxen sodium in a softgel format, a commercially important delivery method for pain relievers. (’979 Patent, col. 1:20-22).

Key Claims at a Glance

  • The complaint asserts infringement of one or more unspecified claims of the ’979 patent (Compl. ¶50). Independent claims of the patent include 1, 8, 15, and 17.
  • The essential elements of independent claim 1 are:
    • A pharmaceutical composition comprising a soft gelatin capsule encapsulating a liquid matrix comprising:
    • (a) naproxen sodium;
    • (b) about 5% lactic acid by weight of the matrix;
    • (c) one or more polyethylene glycols; and
    • (d) one or more solubilizers comprising polyvinylpyrrolidone, propylene glycol, or a combination thereof.
      (’979 Patent, col. 10:55-64).
  • The complaint does not explicitly reserve the right to assert dependent claims, but the general allegation of infringing "one or more claims" implicitly does so.

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the "Apotex ANDA Product," a proposed generic version of Bionpharma's 220 mg Naproxen Sodium Over-the-Counter drug product, for which Apotex filed ANDA No. 210325 (Compl. ¶¶1, 32).

Functionality and Market Context

The complaint alleges that the Apotex ANDA Product is a generic equivalent to Plaintiffs' existing commercial naproxen sodium product (Compl. ¶32). The infringement allegation is based on the act of filing the ANDA, an artificial act of infringement under 35 U.S.C. § 271(e)(2), rather than on an analysis of a commercial product. The complaint does not provide specific technical details regarding the formulation of the accused product itself, as this information is contained within the confidential ANDA submission to the FDA. The central allegation is that the product described in the ANDA, if manufactured and sold, would contain a formulation covered by the claims of the patents-in-suit (Compl. ¶¶37, 50).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-by-claim analysis or the construction of a claim chart. The infringement allegations are pleaded generally on "information and belief," stating that the product detailed in Apotex's confidential ANDA filing will infringe one or more claims of the asserted patents (Compl. ¶¶37, 50). The central factual dispute will depend on the precise composition of the formulation described in ANDA No. 210325.

  • Identified Points of Contention:
    • Factual Question: The primary question is factual: does the formulation described in Apotex's ANDA contain each element of the asserted claims? Specifically, does it contain a naproxen salt, "about 5% lactic acid," polyethylene glycol, and (for the ’979 Patent) a "solubilizer" such as polyvinylpyrrolidone or propylene glycol? Discovery of the ANDA's contents will be necessary to resolve this.
    • Scope Questions: A likely point of dispute will be the scope of "about 5% lactic acid." The parties may contest how much deviation from exactly 5.0% is permissible for a finding of infringement.
    • Technical Questions: For the ’979 Patent, a potential issue is whether any polyvinylpyrrolidone or propylene glycol present in the accused formulation functions as a "solubilizer" as contemplated by the patent, or if its presence is for a different purpose that may fall outside the claim's scope.

V. Key Claim Terms for Construction

  • The Term: "about 5% lactic acid" (’978 Patent, cl. 1; ’979 Patent, cl. 1).

    • Context and Importance: This term appears in the independent claims of both asserted patents. The infringement analysis will turn on whether the percentage of lactic acid in the Apotex ANDA Product falls within the range connoted by "about." Practitioners may focus on this term because its interpretation will define the literal scope of the claims and could be dispositive of infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification discloses a "de-ionizing agent" (of which lactic acid is an example) being present in a molar ratio of "0.2 to 1.0 mole equivalents per mole of the pharmaceutically active agent" (’978 Patent, col. 4:28-32). Plaintiffs may argue this broader disclosure supports interpreting "about 5%" to cover a wider numerical range.
      • Evidence for a Narrower Interpretation: The claims explicitly recite a specific percentage, "5%," modified only by "about." The patent includes numerous formulation examples with specific percentages, including several examples using exactly "5.00" percent lactic acid (’978 Patent, col. 8, Ex. 9; col. 9, Ex. 11-12). Defendants may argue these specific examples limit "about 5%" to a very narrow range close to 5.0%.

  • The Term: "solubilizers" (’979 Patent, cl. 1).

    • Context and Importance: This limitation is required by independent claim 1 of the ’979 Patent but not the ’978 Patent, creating a key distinction between the two patents. Infringement of the ’979 Patent will require showing the accused product contains one of the specified solubilizers.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Claim 1 defines the term as "comprising polyvinylpyrrolidone, propylene glycol, or a combination thereof" (’979 Patent, col. 10:62-64). The use of "comprising" suggests the list is illustrative. Plaintiffs could argue that the mere presence of these substances in the formulation meets the limitation, as they inherently act as solubilizers.
      • Evidence for a Narrower Interpretation: The specification states that such agents can be added "to enhance the solubility of the drug agent" (’979 Patent, col. 6:8-11). Defendants may argue that a substance only qualifies as a "solubilizer" if it is present in a sufficient quantity to materially enhance solubility in the final formulation, and that its presence for other functions (e.g., as a plasticizer or processing aid) would not satisfy the claim element.

VI. Other Allegations

  • Indirect Infringement: The complaint includes claims for declaratory judgment of future inducement and contributory infringement under 35 U.S.C. § 271(b) and (c) should the ANDA be approved (Compl. ¶¶45, 58). The factual basis for these allegations is the filing of the ANDA itself and the intent to market a product with a label that would instruct users to perform an infringing use (i.e., consuming the claimed composition).
  • Willful Infringement: The complaint does not contain a formal allegation of willful infringement. However, it does allege that Apotex has had knowledge of the patents-in-suit "since at least the date it submitted a Paragraph IV certification" on or before November 15, 2017 (Compl. ¶¶36, 49). These allegations establish pre-suit knowledge, a prerequisite for any potential future claim of willful infringement.

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

The resolution of this Hatch-Waxman litigation will likely depend on the answers to two primary questions for the court:

  1. A central evidentiary question will be one of compositional identity: does the confidential formulation disclosed in Apotex's ANDA contain the specific ingredients, in the specific amounts, required by the patent claims? This includes determining if the concentration of lactic acid falls within the scope of "about 5%."
  2. A key claim construction question will be one of definitional scope: what is the proper construction of the term "about 5%" in the context of the patents' specifications and examples? The breadth of this term could determine the outcome of the infringement analysis.