DCT

3:19-cv-01028

Taro Pharmaceutical Industries Ltd v. Novitium Pharma LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:19-cv-01028, D.N.J., 01/24/2019
  • Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant Novitium's principal place of business is located in East Windsor, New Jersey, and it regularly conducts business in the state.
  • Core Dispute: Plaintiff alleges that Defendant’s filing of an Abbreviated New Drug Application (ANDA) to market a generic version of Plaintiff's OVIDE® brand malathion lotion constitutes an act of patent infringement under the Hatch-Waxman Act.
  • Technical Context: The patents relate to processes for preparing highly purified malathion for pharmaceutical use and the resulting stable, high-purity compositions with reduced levels of toxic impurities.
  • Key Procedural History: The litigation was triggered by a Paragraph IV certification letter dated December 10, 2018, in which Defendant Novitium notified Plaintiff that it had filed ANDA No. 212255 with the U.S. Food and Drug Administration (FDA) seeking approval to market a generic malathion lotion. In its letter, Novitium asserted that Plaintiff's patents, which are listed in the FDA's "Orange Book" for OVIDE®, are invalid, unenforceable, and/or will not be infringed.

Case Timeline

Date Event
2005-07-06 Earliest Priority Date for ’445 and ’324 Patents
2009-07-14 U.S. Patent No. 7,560,445 Issued
2011-07-12 U.S. Patent No. 7,977,324 Issued
2018-12-10 Defendant Notifies Plaintiff of ANDA Filing via Paragraph IV Letter
2019-01-24 Complaint Filed

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

No probative visual evidence provided in complaint.

U.S. Patent No. 7,560,445 - Process for Preparing Malathion for Pharmaceutical Use

The Invention Explained

  • Problem Addressed: The patent describes that commercially available malathion contains numerous toxic impurities, such as isomalathion, which can form during synthesis or as breakdown products during storage (ʼ445 Patent, col. 3:59-65). The physical properties of malathion—it is a liquid at ambient temperature with a high boiling point—make removing these impurities by conventional means like crystallization or distillation difficult and problematic (ʼ445 Patent, col. 3:51-58).
  • The Patented Solution: The invention provides a multi-step chemical process to synthesize and purify malathion to a level suitable for pharmaceutical use. The process involves creating an aqueous solution of a key precursor (O,O-dimethyldithiophosphoric acid) and reacting it with diethyl maleate to form malathion, followed by treating the malathion with an acidic sulfur reagent (e.g., sodium bisulfite solution with a pH below 7.0) to remove certain impurities (ʼ445 Patent, col. 4:5-15, col. 4:46-51). The process yields a highly pure malathion composition that is also stable during storage (ʼ445 Patent, col. 3:1-4).
  • Technical Importance: This process enables the production of malathion with significantly lower levels of toxic impurities than previously available commercial preparations, making it suitable for direct use in pharmaceutical formulations (ʼ445 Patent, col. 3:59-65).

Key Claims at a Glance

The complaint alleges infringement of "at least one claim" without specifying any claims (Compl. ¶29). Claim 1 is the principal independent process claim.

  • Claim 1 (Independent): A process for preparing malathion comprising the steps of:
    • Preparing a solution of O,O-dimethyldithiophosphoric acid in an organic solvent;
    • Extracting the O,O-dimethyldithiophosphoric acid into water to generate an aqueous solution;
    • Reacting the aqueous solution with diethyl maleate to form malathion;
    • Treating the malathion with a sulfur reagent having a pH less than about 7.0; and
    • Wherein the resulting malathion has a specified purity profile, including greater than 98.5% malathion and less than 0.1% isomalathion.

U.S. Patent No. 7,977,324 - Process for Preparing Malathion for Pharmaceutical Use

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’445 Patent, this patent addresses the same underlying technical problem: the presence of toxic impurities in malathion preparations that render them unsuitable for pharmaceutical applications unless purified (’324 Patent, col. 2:1-5).
  • The Patented Solution: Rather than claiming the purification process itself, this patent claims the end product: a pharmaceutical formulation that contains the highly purified malathion. The invention is defined by the specific low levels of various toxic impurities (such as isomalathion, malaoxon, and MeOOSPO) present in the final malathion composition used in the drug product (’324 Patent, Abstract; col. 2:5-40).
  • Technical Importance: The invention provides patent protection for the pharmaceutical composition itself, ensuring that drug products sold to consumers contain malathion meeting the high purity and stability standards enabled by the purification process (’324 Patent, col. 3:1-12).

Key Claims at a Glance

The complaint alleges infringement of "at least one claim" without specifying any claims (Compl. ¶46). Claim 1 is the principal independent composition claim.

  • Claim 1 (Independent): A pharmaceutical formulation comprising:
    • Pharmaceutical grade malathion,
    • Wherein said malathion contains a specified low-level impurity profile, including 0.1% or less (w/w) of MeOOSPO, 0.1% or less of MeOSSPO, 0.2% or less of MeOOSPS, less than 0.1% of methyl malathion, 0.1% or less of malaoxon, and 0.1% or less of isomalathion.

III. The Accused Instrumentality

Product Identification

Defendant Novitium's proposed generic malathion lotion, 0.5%, which is the subject of ANDA No. 212255 filed with the FDA (Compl. ¶18).

Functionality and Market Context

The complaint alleges that Novitium's product is a generic version of Plaintiff Taro's OVIDE® brand malathion lotion, 0.5% (Compl. ¶1, ¶18). Under the Hatch-Waxman Act framework, an ANDA product is intended to be a therapeutic equivalent to the reference listed drug. The complaint alleges that upon receiving FDA approval, Novitium will commercially manufacture, sell, and import its generic lotion throughout the United States (Compl. ¶22-23).

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for a claim-chart analysis. Its infringement theory is summarized below.

’445 Patent Infringement Allegations

The complaint asserts that Novitium’s filing of ANDA No. 212255 is an artificial act of direct infringement under 35 U.S.C. § 271(e)(2) (Compl. ¶27). The underlying theory is that the commercial product proposed in the ANDA will either be made by a process that meets all the limitations of at least one process claim of the ’445 patent, or will be the direct product of such a process (Compl. ¶28-29). The complaint does not, however, allege any specific facts regarding the actual manufacturing process Novitium intends to use.

’324 Patent Infringement Allegations

The complaint makes a parallel assertion for the ’324 patent, alleging that the filing of the ANDA constitutes infringement under § 271(e)(2) (Compl. ¶44). The core of this allegation is that the generic malathion lotion described in Novitium's ANDA contains the "precise compound described and claimed in the '324 patent," meaning it possesses the specific low-level impurity profile that defines the patent's claims (Compl. ¶45-46).

Identified Points of Contention

  • Evidentiary Question (for the ’445 Patent): A primary issue will be factual and evidentiary: what manufacturing process is described in Novitium’s confidential ANDA? The case will depend on whether discovery shows that Novitium's process for producing its malathion active pharmaceutical ingredient (API) includes the claimed steps, particularly the treatment with an acidic sulfur reagent to achieve the required purity.
  • Factual Question (for the ’324 Patent): The infringement analysis will focus on the chemical composition of Novitium's proposed product. Does the malathion API, as specified in the ANDA's Chemistry, Manufacturing, and Controls (CMC) section, meet the specific quantitative impurity limitations recited in the asserted claims of the ’324 patent?

V. Key Claim Terms for Construction

The complaint does not identify any specific claim term disputes. However, based on the technology and claim language, the following terms may become central to the case.

  • “treating the malathion… with a sulfur reagent, wherein the sulfur reagent has a pH less than about 7.0” (’445 Patent, claim 1)

    • Context and Importance: This limitation defines a key purification step that distinguishes the claimed process. The scope of "treating" and the meaning of the pH requirement are critical to determining infringement. Practitioners may focus on this term because the effectiveness of the purification is tied to the acidic nature of the reagent, and a defendant may argue its process uses a different reagent or operates under different conditions that fall outside this scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim uses the general term "treating," which could encompass a variety of contact methods. The specification describes mixing the malathion with a sodium bisulfite solution for about two hours, but does not explicitly limit "treating" to this duration or method (’445 Patent, col. 4:56-58).
      • Evidence for a Narrower Interpretation: The specification provides a specific example using a 20% sodium bisulfite solution with a pH range of 6.1 to 6.3 (’445 Patent, col. 4:53-58; col. 8:1-3). A party could argue that this example informs the proper construction of the claim, potentially limiting its scope to similar reagents and conditions.

  • “pharmaceutical grade malathion” (’324 Patent, claim 1)

    • Context and Importance: This term appears in the preamble of claim 1 and provides context for the claimed invention. Whether this term is interpreted as limiting the claim's scope could be a significant point of contention. If limiting, it could require the accused product to meet a standard of purity beyond the explicitly recited impurity percentages.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue that "pharmaceutical grade" is merely descriptive of the intended use and that the patentee acted as its own lexicographer by defining the term through the explicit list of impurity limitations that follow in the body of the claim.
      • Evidence for a Narrower Interpretation: The parent ’445 patent repeatedly compares the invention's output to "USP malathion," a recognized standard from the United States Pharmacopeia (’445 Patent, Table III, col. 13). A party could argue that "pharmaceutical grade" is not superfluous but instead imports an established industry standard, and that infringement would require meeting both that external standard and the claim's explicit limitations.

VI. Other Allegations

The complaint does not contain allegations of indirect or willful infringement.

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

The resolution of this case will likely depend on the answers to three central questions:

  • A question of process discovery: For the ’445 process patent, what are the specific steps detailed in Novitium’s confidential ANDA for manufacturing its malathion API? Will discovery reveal a process that includes the key claimed purification steps, particularly the use of an acidic sulfur reagent, or will it show a non-infringing alternative process?
  • A question of chemical fact: For the ’324 composition patent, does the final malathion formulation proposed in Novitium’s ANDA meet the specific, quantitative impurity profile recited in the asserted claims? This will be determined through a technical analysis of the ANDA's CMC data and/or analytical testing of product samples.
  • A question of validity: As foreshadowed by Novitium's Paragraph IV letter, can Novitium prove by clear and convincing evidence that the claimed purification process or the resulting high-purity composition was anticipated or rendered obvious by the prior art existing before July 2005?