DCT

1:12-cv-08985

Endo Pharma Inc v. Actavis Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:12-cv-08985, S.D.N.Y., 12/11/2012
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct continuous and systematic business in the district, including marketing and selling pharmaceutical products, and derive substantial revenue from such activities.
  • Core Dispute: Plaintiff alleges that Defendant’s generic extended-release oxymorphone tablets infringe three patents related to methods for manufacturing high-purity analgesics and specific controlled-release drug formulations.
  • Technical Context: The technology concerns opioid analgesics, focusing on chemical purity in the manufacturing process and pharmaceutical formulations designed to provide long-acting pain relief for patients with chronic pain.
  • Key Procedural History: The complaint notes that Plaintiff and Defendant ASA previously litigated an infringement dispute over a different patent (U.S. Patent No. 5,958,456), which was settled in February 2009. Plaintiff explicitly states the settlement agreement from that case does not grant Defendants any rights under the patents currently in suit.

Case Timeline

Date Event
2001-07-06 Priority Date for ’122 and ’216 Patents
2006-12-14 Priority Date for ’482 Patent
2008-02-01 Defendant ASA files Abbreviated New Drug Application (ANDA) for its generic product (approximate date)
2009-02-01 Plaintiff and Defendant ASA settle prior infringement dispute (approximate date)
2010-12-14 ’482 Patent Issued
2011-12-12 FDA approves Plaintiff's sNDA for Opana ER CRF
2012-11-13 ’122 Patent Issued
2012-12-11 ’216 Patent Issued
2012-12-11 Complaint Filing Date

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

U.S. Patent No. 7,851,482 - “Method For Making Analgesics” (Issued Dec. 14, 2010)

The Invention Explained

  • Problem Addressed: The patent’s background section states that existing methods for synthesizing the opioid oxymorphone can result in contamination with "alpha, beta unsaturated ketones," which are undesirable impurities (’482 Patent, col. 1:18-24). The patent identifies a need for methods that can produce oxymorphone with a higher degree of purity (’482 Patent, col. 1:15-17).
  • The Patented Solution: The invention provides a method for purifying oxymorphone hydrochloride to reduce the level of these ketone impurities to less than 10 parts per million (ppm) (’482 Patent, Abstract). The method involves reducing a starting material of oxymorphone hydrochloride using gaseous hydrogen in a "strongly acid water and alcohol solvent" at a temperature between 60°C and 70°C for a specified period (’482 Patent, col. 1:49-55).
  • Technical Importance: Achieving high purity is a critical objective in manufacturing pharmaceutical active ingredients to meet regulatory standards for safety and efficacy (’482 Patent, col. 1:15-17).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted. Independent claim 1 is a composition claim directed to the purified product.
  • Independent Claim 1:
    • A composition of matter comprising oxymorphone hydrochloride.
    • The composition has less than 10 ppm of 14-hydroxymorphinone (an alpha, beta unsaturated ketone).
    • The impurity level is measured by High-Performance Liquid Chromatography (HPLC).
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,309,122 - “Oxymorphone Controlled Release Formulations” (Issued Nov. 13, 2012)

The Invention Explained

  • Problem Addressed: The patent background explains that immediate-release forms of oxymorphone have a short duration of action, requiring frequent dosing every 4-6 hours to manage chronic pain (’122 Patent, col. 1:50-54). This dosing schedule can lead to poor patient compliance, resulting in suboptimal pain control and fluctuations in blood plasma levels of the drug (’122 Patent, col. 1:42-49).
  • The Patented Solution: The patent describes a controlled-release oral tablet formulation of oxymorphone designed to provide sustained pain relief for at least 12 hours, allowing for once or twice-daily dosing (’122 Patent, col. 3:13-17). The solution is embodied in a tablet containing oxymorphone within a "controlled release delivery system," such as a hydrophilic matrix comprising specific gums that form a gel upon exposure to gastrointestinal fluid, thereby releasing the drug at a controlled rate (’122 Patent, col. 4:5-10, col. 4:15-24). The patent also notes the potential role of the 6-OH oxymorphone metabolite in providing pain relief (’122 Patent, col. 5:1-6).
  • Technical Importance: Developing an effective controlled-release formulation for a potent opioid improves patient compliance and provides more consistent, around-the-clock analgesia, which are key goals in chronic pain management (’122 Patent, col. 1:39-44).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted. Independent claim 1 defines the composition by its dosing interval and in vitro dissolution properties.
  • Independent Claim 1:
    • An analgesically effective controlled release pharmaceutical composition in the form of a tablet with a twelve-hour dosing interval.
    • The tablet contains oxymorphone or a salt thereof as the "sole active ingredient."
    • It includes a "controlled release delivery system" with at least one pharmaceutical excipient.
    • The tablet exhibits a specific in vitro dissolution profile when tested via USP Paddle Method, releasing about 15% to 50% of the oxymorphone by weight at the 1-hour mark.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,329,216 - “Oxymorphone Controlled Release Formulations” (Issued Dec. 11, 2012)

  • Patent Identification: U.S. Patent No. 8,329,216, “Oxymorphone Controlled Release Formulations,” Issued Dec. 11, 2012 (Compl. ¶20).
  • Technology Synopsis: This patent, which shares a specification with the ’122 Patent, is also directed to controlled-release oral dosage forms of oxymorphone. The technology addresses the problem of frequent dosing required by immediate-release formulations by providing a tablet that offers sustained pain relief for at least 12 hours, thereby improving patient compliance and clinical outcomes in chronic pain management (’216 Patent, col. 1:15-24, col. 1:50-55).
  • Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶36).
  • Accused Features: The complaint alleges that the "Actavis Generic Oxymorphone ER Tablets" infringe this patent (Compl. ¶36).

III. The Accused Instrumentality

Product Identification

  • The accused products are "Actavis Generic Oxymorphone ER Tablets," specifically identified as the 7.5 mg and 15 mg strength versions (Compl. ¶¶4, 27).

Functionality and Market Context

  • The complaint alleges the accused products are generic, extended-release tablets containing oxymorphone hydrochloride for pain relief (Compl. ¶4). They are described as a generic version of an original, "non-crush-resistant" formulation of Plaintiff's Opana® ER product (Compl. ¶24). The complaint alleges that Defendants are engaged in the "commercial manufacturing, use and sale" of these tablets throughout the United States (Compl. ¶24). The complaint does not provide further technical detail regarding the formulation or dissolution profile of the accused tablets.

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart or detailed technical allegations mapping elements of the accused product to the patent claims. The infringement allegations for all three patents-in-suit are made in a conclusory fashion (Compl. ¶¶30, 33, 36). No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • ’482 Patent (Purity): The central dispute will likely be factual and evidentiary. A key question for the court will be whether the Actavis generic product, as manufactured and sold, contains "less than 10 ppm" of the 14-hydroxymorphinone impurity specified in claim 1. This determination will depend on laboratory testing of the accused product using the HPLC method referenced in the patent.
    • ’122 Patent (Formulation): The infringement analysis will likely focus on whether the accused product meets the functional limitations of the claims. A primary question will be whether the "Actavis Generic Oxymorphone ER Tablets" exhibit the specific in vitro dissolution rate—releasing "about 15% to about 50%" of the drug at one hour—required by claim 1 when subjected to the specified USP test conditions. Further questions may arise regarding the construction of the term "controlled release delivery system" and whether the excipients used in the accused product fall within its scope.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of claim construction disputes. However, based on the technology, certain terms may become central to the case.

  • Term: "less than 10 ppm" (from Claim 1 of the ’482 Patent)

    • Context and Importance: This term sets the quantitative threshold for infringement of the patent’s composition claim. The dispute will likely hinge on whether the accused product's impurity level falls below this precise numerical boundary. Practitioners may focus on this term as it is a dispositive, measurable limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Parties could argue that the term should be interpreted according to its plain and ordinary meaning, covering any product with a measured impurity level below 10.0 ppm, without regard to measurement uncertainty.
      • Evidence for a Narrower Interpretation: The specification provides multiple examples of purification processes yielding specific impurity levels, such as "6.2 ppm," "1.1 ppm," and "undetectable" (’482 Patent, col. 18:2, col. 19:27, col. 21:31). A party could cite these examples to argue that the "less than 10 ppm" limit must be understood in the context of the specific HPLC measurement techniques and conditions disclosed, potentially narrowing its application.

  • Term: "controlled release delivery system" (from Claim 1 of the ’122 Patent)

    • Context and Importance: This term defines the core technological component of the claimed formulation. Its construction will determine the range of pharmaceutical formulations that can be found to infringe. Practitioners may focus on this term because its scope dictates whether the defendant's specific combination of excipients is covered by the claim.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification discloses several different types of controlled-release technologies, including hydrophilic matrices that form a gel, coated beads, and osmotic pumps (’122 Patent, col. 4:5-10; col. 5:62-65). This disclosure could support a broad construction that encompasses any system of excipients achieving the claimed controlled-release function and dissolution profile.
      • Evidence for a Narrower Interpretation: The patent describes a "preferred form" of the delivery system comprising a mixture of a "heteropolysaccharide gum" and a "homopolysaccharide gum" (’122 Patent, col. 4:15-24). The detailed examples focus exclusively on this type of matrix system (’122 Patent, Table 1). A party could argue these specific disclosures should limit the scope of the term to such gum-based matrix systems.

VI. Other Allegations

  • Indirect Infringement: The complaint asserts infringement under 35 U.S.C. § 271(a)-(c) but does not plead specific facts to support claims for induced or contributory infringement, such as allegations related to product labels, marketing materials, or instructions to end-users (Compl. ¶¶30, 33, 36).
  • Willful Infringement: The complaint alleges willful infringement for all three patents. For the ’482 and ’122 patents, the allegation is based on Defendants' alleged awareness of the issued patents (Compl. ¶¶31, 34). For the ’216 patent, which issued the same day the complaint was filed, the allegation is based on Defendants' alleged awareness of its "pending issuance" (Compl. ¶37).

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

  1. A core issue will be one of quantitative analysis: does laboratory testing of the accused "Actavis Generic Oxymorphone ER Tablets" demonstrate that they meet the precise numerical limitations of the asserted claims? Specifically, for the ’482 patent, is the level of the 14-hydroxymorphinone impurity below the 10 ppm threshold, and for the ’122 patent, does the tablet’s dissolution rate fall within the claimed 15-50% release profile at one hour?

  2. A key evidentiary question will be one of scienter: what evidence, including the prior litigation history between the parties, supports the allegation that Defendants were aware of the patents-in-suit (or the pending application for the ’216 patent) and proceeded to manufacture and sell their product with the objective recklessness required to support a finding of willful infringement?