DCT

3:18-cv-14035

Duke University v. Akorn Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:18-cv-14035, D.N.J., 09/19/2018
  • Venue Allegations: Plaintiffs allege venue is proper in the District of New Jersey because Defendant Akorn committed an act of infringement in the district by filing its Abbreviated New Drug Application (ANDA) and maintains a regular and established place of business in the district, including manufacturing and research facilities.
  • Core Dispute: Plaintiffs allege that Defendants' filing of an ANDA to market a generic version of Plaintiffs' LATISSE® product constitutes infringement of a patent directed to methods of treating hair loss using specific non-naturally occurring prostaglandin analogs.
  • Technical Context: The technology relates to pharmaceutical compositions for stimulating hair growth, particularly for eyelashes, using synthetic prostaglandin analogs designed to selectively target specific biological receptors.
  • Key Procedural History: The complaint describes prior litigation between the parties over a parent patent (U.S. Patent No. 7,388,029), where its claims were found infringed but ultimately invalidated as obvious by the U.S. Court of Appeals for the Federal Circuit. Plaintiffs allege the claims of the current patent-in-suit are narrower and patentably distinct from the invalidated claims because they are limited to a specific chemical subclass (C-1 amides) that allegedly produces unexpected results.

Case Timeline

Date Event
2000-03-31 ’270 Patent Priority Date
2008-01-01 FDA approved LATISSE® (year only)
2009-01-01 LATISSE® commercially launched (year only)
2014-04-01 Akorn, Inc. acquired Hi-Tech Pharmacal Co., Inc. (month only)
2017-02-28 U.S. Patent No. 9,579,270 Issued
2017-03-01 FDA listed ’270 Patent in the Orange Book (month only)
2018-07-10 Akorn’s Paragraph IV Letter sent to Plaintiffs
2018-09-19 Complaint Filed

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

U.S. Patent No. 9,579,270 - Compositions and Methods for Treating Hair Loss Using Non-Naturally Occurring Prostaglandins

  • Patent Identification: U.S. Patent No. 9579270, "Compositions and Methods for Treating Hair Loss Using Non-Naturally Occurring Prostaglandins," issued February 28, 2017 (’270 Patent).

The Invention Explained

  • Problem Addressed: The patent describes hair loss as a common problem for which existing treatments have safety concerns or limited efficacy (Compl. ¶37; ’270 Patent, col. 3:9-14). While prostaglandins were known to have potential for hair growth, their administration could cause undesirable side effects like inflammation and smooth muscle contraction due to their interaction with multiple biological receptors (’270 Patent, col. 3:9-19).
  • The Patented Solution: The invention is a method of treating hair loss by topically applying compositions containing specific prostaglandin F analogs. These analogs are designed to selectively activate the FP receptor, which is associated with hair growth, without activating other receptors that would cause negative side effects (’270 Patent, col. 3:24-35). This selectivity is presented as the key to providing a safe and effective hair growth treatment.
  • Technical Importance: The invention proposed a way to isolate the therapeutic hair-growth effects of prostaglandins from their known negative side effects by creating compounds with specific receptor selectivity, addressing a key challenge in developing such treatments (Compl. ¶37; ’270 Patent, col. 3:15-23).

Key Claims at a Glance

  • The complaint asserts dependent claims 22 and 30, which depend from independent claim 17 (Compl. ¶¶32, 33, 50).
  • The essential elements of independent claim 17 are:
    • A method of growing hair.
    • The method comprises topically applying to mammalian skin a safe and effective amount of a composition.
    • The composition contains an active ingredient, which is a prostaglandin F analog having a specified core chemical structure, or a pharmaceutically acceptable salt thereof.
    • The R¹ chemical group at the C-1 position of the analog is selected from a group that includes an amide (C(O)NHR³), but notably excludes a carboxylic acid (C(O)OH).
    • The Z chemical group at the end of the omega chain is selected from a group including various aromatic and heterocyclic structures.
  • The complaint reserves the right to assert additional claims (Compl. ¶61).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is Defendants' proposed generic bimatoprost ophthalmic solution, 0.03%, for which ANDA No. 203051 was submitted to the FDA (Compl. ¶¶15, 52).

Functionality and Market Context

  • The product is a generic version of Plaintiffs' LATISSE® product, which is indicated for the treatment of hypotrichosis (inadequate eyelashes) by increasing eyelash growth, including length, thickness, and darkness (Compl. ¶36). The complaint alleges that LATISSE® has been commercially successful, with annual net sales exceeding $70 million since its 2009 launch (Compl. ¶38). The active ingredient in both LATISSE® and the accused generic product is bimatoprost (Compl. ¶27).

IV. Analysis of Infringement Allegations

Claim Chart Summary: ’270 Patent Infringement Allegations

Claim Element (from Independent Claim 17) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of growing hair… The accused product is a generic version of LATISSE®, which is indicated to treat hypotrichosis of the eyelashes by increasing their growth. ¶¶36, 52 col. 65:1-66
…comprising topically applying to mammalian skin… The proposed product label for the accused generic bimatoprost product will instruct users to apply the solution topically to the skin of the eyelid margin. ¶¶76, 78 col. 65:1-3
…a composition comprising…an active ingredient selected from the group consisting of a prostaglandin F analog of the following structure… The active ingredient of the accused product is bimatoprost, which the complaint alleges is a synthetic PGF2α analog and provides its chemical structure. The complaint includes a visual depicting the chemical structure of bimatoprost (Compl. ¶27). ¶¶27, 28, 34 col. 46:7-66
…wherein R¹ is selected from the group consisting of C(O)NHOH, CH₂OH, S(O)₂R³, C(O)NHR³, and C(O)NHS(O)₂R⁴; The complaint alleges that in bimatoprost, the R¹ group is C(O)NHR³, specifically an ethyl amide where R³ is CH₂CH₃. This differs from naturally occurring PGF2α, which has a carboxylic acid at this position. ¶¶28, 32, 34 col. 65:16-20
…Z is selected from the group consisting of a carbocyclic group, a heterocyclic group, an aromatic group… The complaint alleges that in bimatoprost, the Z group is a phenyl group, which is an aromatic group. ¶¶28, 33, 34 col. 65:49-55

Identified Points of Contention

  • Scope Questions: The complaint alleges bimatoprost does not bind to the FP receptor, but instead binds to a "prostamide receptor" (Compl. ¶29). The patent, however, describes its invention as achieving hair growth through "selectively activat[ing] the FP receptor" (’270 Patent, col. 3:30-31). This raises the question of whether a compound that allegedly does not activate the FP receptor can infringe a patent that describes FP receptor activation as its mechanism of action, even if the compound's chemical structure falls within the literal language of a claim.
  • Technical Questions: A central technical question will be whether the pharmacological activity of C-1 amide compounds like bimatoprost is sufficiently different from and unexpected over the activity of C-1 carboxylic acid compounds to support the non-obviousness of the asserted claims, particularly in light of the Federal Circuit's invalidation of the broader claims in the parent '029 patent (Compl. ¶¶47-50).

V. Key Claim Terms for Construction

  • The Term: "prostaglandin F analog"
  • Context and Importance: The definition of this term is critical. The infringement case depends on bimatoprost being classified as a "prostaglandin F analog," while the validity defense against the prior art may rely on distinguishing the claimed subclass of analogs from others. Practitioners may focus on this term because Defendant could argue that bimatoprost, which allegedly acts on the prostamide receptor, is functionally not a "prostaglandin F analog" in the context of a patent that repeatedly frames its invention around selective FP receptor activation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims define the "prostaglandin F analog" primarily by its chemical structure (’270 Patent, Claim 17). The specification provides a broad structural definition of prostaglandins as "C-20 unsaturated fatty acids" (’270 Patent, col. 3:26-27), suggesting a structural rather than functional definition.
    • Evidence for a Narrower Interpretation: The Background and Summary sections of the patent repeatedly describe the invention's purpose as using analogs that "selectively activate the FP receptor" to achieve hair growth while avoiding side effects (’270 Patent, col. 3:28-35). This could support an argument that the term implies a functional requirement of FP receptor activation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on the allegation that Akorn's product labeling will instruct patients and healthcare providers to topically apply the bimatoprost solution to grow eyelashes, thereby performing the steps of the patented method (Compl. ¶¶76, 78). Contributory infringement is based on the allegation that the accused product is especially made for an infringing use and has no substantial non-infringing uses (Compl. ¶¶66, 94).
  • Willful Infringement: Willfulness allegations are based on Akorn's alleged knowledge of the ’270 patent, purportedly obtained no later than its issuance, its listing in the FDA's Orange Book, or the submission of its Paragraph IV certification to the FDA (Compl. ¶¶64, 73, 79).

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

  • A central issue will be one of validity: can Plaintiffs demonstrate that the asserted claims, which are narrowed to the subclass of C-1 amide prostaglandin analogs, are non-obvious in light of the prior art and the Federal Circuit's decision invalidating the broader claims of the parent '029 patent? The outcome may depend on whether the evidence of "unexpected results" for this subclass is found to be commensurate with the scope of the asserted claims.
  • A key question for infringement will be one of claim scope: can the term "prostaglandin F analog" be construed to cover bimatoprost, a compound the complaint alleges does not activate the FP receptor, when the patent specification describes selective FP receptor activation as the invention's core mechanism? This raises a potential conflict between the literal chemical structure recited in the claim and the functional solution described in the specification.