DCT

1:15-cv-05997

Janssen Pharmaceutica NV v. Fera Pharma LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:15-cv-05997, S.D.N.Y., 07/30/2015
  • Venue Allegations: Venue is alleged to be proper based on Defendant Fera Pharmaceuticals, LLC being a New York limited liability company that conducts business in the district, is registered as a Pharmacy Establishment in New York, and is preparing to market the accused products in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s submission of an Abbreviated New Drug Application (ANDA) to obtain FDA approval for a generic version of the SPORANOX® oral solution constitutes an act of infringement of a patent covering pharmaceutical compositions for poorly water-soluble drugs.
  • Technical Context: The technology relates to pharmaceutical formulations that use chemically modified cyclodextrins to increase the solubility and stability of drugs that do not dissolve well in water, a common challenge in developing liquid dosage forms.
  • Key Procedural History: The asserted patent, U.S. Patent No. 6,407,079, was the subject of an Ex Parte Reexamination, with a Reexamination Certificate issued on October 16, 2014, which confirmed the patentability of the primary independent claim (Claim 1) asserted in this case. The lawsuit was triggered by Defendant's submission of an ANDA with a Paragraph IV certification, asserting that the patent is invalid or will not be infringed by its proposed generic product.

Case Timeline

Date Event
1983-12-21 '079 Patent Priority Date (German Application)
2002-06-18 '079 Patent Issue Date
2014-10-16 '079 Patent Ex Parte Reexamination Certificate Issue Date
2015-06-17 Date of Fera's Paragraph IV Notice Letter to Janssen
2015-07-30 Complaint Filing Date

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

U.S. Patent No. 6,407,079 - “Pharmaceutical compositions containing drugs which are instable or sparingly soluble in water and methods for their preparation”

  • Patent Identification: U.S. Patent No. 6,407,079, “Pharmaceutical compositions containing drugs which are instable or sparingly soluble in water and methods for their preparation,” issued June 18, 2002.

The Invention Explained

  • Problem Addressed: The patent addresses the technical challenge that many drugs are only sparingly soluble or unstable in water, which complicates the creation of effective aqueous formulations such as oral solutions or injections. Prior methods to increase solubility, such as using co-solvents or surfactants, often introduced problems of toxicity, reduced efficacy, or chemical instability ('079 Patent, col. 1:14-41). Even the use of a known solubilizing agent, β-cyclodextrin, was limited by its own poor water solubility ('079 Patent, col. 1:50-54).
  • The Patented Solution: The invention is a pharmaceutical composition that overcomes this problem by using specific, partially etherified β-cyclodextrin derivatives. These derivatives, such as hydroxyalkyl ethers of β-cyclodextrin, are themselves highly water-soluble ('079 Patent, col. 2:20-22). They form an "inclusion compound" by encapsulating the poorly soluble drug molecule within their ring-like structure, thereby significantly increasing the drug's solubility and stability in an aqueous solution ('079 Patent, Abstract; col. 2:8-18). For example, FIG. 1 in the patent, attached as Exhibit A to the complaint, shows a graph of drug concentration versus cyclodextrin percentage, illustrating a linear increase in solubility for the drug indometacin as the concentration of the patented cyclodextrin derivative increases (Compl. ¶10, Ex. A).
  • Technical Importance: This technology provided a formulation platform to deliver poorly soluble drugs in aqueous solutions with improved bioavailability and lower toxicity compared to earlier solubilization techniques ('079 Patent, col. 6:49-53).

Key Claims at a Glance

  • The complaint alleges infringement of "one or more claims" without specifying them (Compl. ¶20). Independent claim 1 is representative of the core invention.
  • Essential elements of Independent Claim 1 include:
    • A pharmaceutical composition comprising an inclusion compound of:
    • (i) a drug that is sparingly soluble in water and can fit into the cavity of a cyclodextrin ring; and
    • (ii) a "partially etherified β-cyclodextrin" where the etherifying groups (residues R) are hydroxyalkyl groups (and optionally some alkyl groups);
    • wherein the cyclodextrin ether has a water solubility greater than 1.8 g in 100 ml of water; and
    • wherein the final composition has "considerably increased water solubility and stability" relative to the drug alone, with "very low toxicity."

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is Defendant Fera's proposed generic version of SPORANOX® (itraconazole) oral solution, for which Fera filed Abbreviated New Drug Application (ANDA) No. 202762 with the FDA (Compl. ¶1). The complaint notes that SPORANOX® oral solution is covered by the claims of the '079 Patent (Compl. ¶12). A potential drafting inconsistency is noted, as the prayer for relief references different ANDA numbers (207608 and 206790) (Compl. p. 7).

Functionality and Market Context

  • The complaint alleges that Fera’s product is a generic copy of Janssen's branded SPORANOX® oral solution (Compl. ¶14). The infringement theory is based on the premise that to create a stable oral solution of itraconazole, a sparingly soluble drug explicitly mentioned in the patent ('079 Patent, col. 3:42), Fera’s product must necessarily contain a solubilizing agent that falls within the scope of the '079 Patent's claims (Compl. ¶20). Fera seeks to market its product as a lower-cost generic alternative to Janssen's branded drug upon receiving FDA approval (Compl. ¶17). The complaint does not provide specific details of the formulation contained in Fera's ANDA.

IV. Analysis of Infringement Allegations

The complaint makes general infringement allegations without providing a detailed claim chart. The following table summarizes the apparent infringement theory for Claim 1, based on the allegation that Fera's ANDA product is a copy of a product covered by the '079 Patent.

'079 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
Pharmaceutical composition comprising an inclusion compound of (i) a drug capable of fitting into the cavity of the cyclodextrin ring system which is instable or only sparingly soluble in water... Fera's proposed product is alleged to be a pharmaceutical composition containing itraconazole, a sparingly water-soluble drug identified in the patent as suitable for forming an inclusion compound. ¶¶1, 14, 20 col. 3:42
...with (ii) a partially etherified β-cyclodextrin of the formula: (β-CD)—OR wherein the residues R are hydroxyalkyl groups and part of said residues R may optionally be alkyl groups... Fera's proposed oral solution is alleged to contain a partially etherified β-cyclodextrin derivative with hydroxyalkyl groups as a solubilizing agent for the itraconazole. ¶20 col. 2:16-26
...the β-cyclodextrin ether having a water solubility of greater than 1.8 g in 100 ml water... The cyclodextrin derivative in Fera's product is alleged to have a water solubility exceeding that of unmodified β-cyclodextrin, as required by the claim. ¶20 col. 1:52-53
...wherein said composition has considerably increased water solubility and stability relative to said drugs, with very low toxicity. By being formulated as a stable oral solution, Fera's product is alleged to inherently exhibit the claimed "considerably increased water solubility and stability" for its active ingredient, itraconazole. ¶20 col. 2:9-13

Identified Points of Contention

  • Technical Questions: A central question is the precise chemical identity and properties of the excipients in Fera's ANDA formulation. Discovery will be required to determine if Fera's product uses a cyclodextrin derivative at all, and if so, whether that specific derivative meets the claim limitations regarding the type of ether groups (e.g., hydroxyalkyl) and its quantitative water solubility.
  • Scope Questions: The dispute may turn on whether the specific solubilizing agent used by Fera, once identified, falls within the scope of the term "partially etherified β-cyclodextrin." Fera's non-infringement defense, noted in its Paragraph IV certification (Compl. ¶15), suggests it may argue that it has designed around the claims with a different, non-infringing formulation.

V. Key Claim Terms for Construction

The complaint does not identify any specific claim terms for construction. However, based on the technology, the following terms may be central to the dispute.

  • The Term: "partially etherified β-cyclodextrin"

    • Context and Importance: This term defines the novel excipient at the heart of the invention. Its construction will determine which specific chemical structures are covered by the patent. Practitioners may focus on this term because Fera could argue that its chosen excipient, even if a cyclodextrin derivative, does not meet the definition of "partially etherified" as understood in the context of the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides a general chemical formula, (β-CD)—OR, and describes the R groups as "hydroxyalkyl groups" such as "hydroxyethyl, hydroxypropyl and dihydroxypropyl" ('079 Patent, col. 2:16-26).
      • Evidence for a Narrower Interpretation: The patent distinguishes the invention from certain prior art methylated β-cyclodextrins, which could be used to argue that the term does not cover all possible ether derivatives ('079 Patent, col. 1:55-61). The patent also discloses specific molar substitution (MS) and degree of substitution (DS) ranges in dependent claims, which a party might argue should inform the meaning of the broader term in claim 1 ('079 Patent, col. 2:45-60).

  • The Term: "considerably increased water solubility"

    • Context and Importance: This is a term of degree that is not quantitatively defined in Claim 1. Its interpretation is critical for determining infringement and could be a basis for an indefiniteness challenge.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The absence of a specific numerical threshold in the claim itself could support an interpretation where any meaningful, non-trivial increase in solubility meets the limitation.
      • Evidence for a Narrower Interpretation: The specification provides numerous examples showing very large increases in solubility, such as a 30-fold increase for indometacin and a 96-fold increase for itraconazole ('079 Patent, col. 4:56-65, Table 1; col. 5:10, Table 2). A party could argue that "considerably" must be interpreted in light of these high-magnitude examples, setting a high bar for infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint includes allegations of future induced and contributory infringement should Fera's ANDA be approved (Compl. ¶¶ 21, 30). The factual basis for these claims would likely be Fera's proposed product labeling and instructions, which would direct medical professionals and patients to administer the allegedly infringing oral solution.
  • Willful Infringement: Willfulness is alleged based on Fera's awareness of the '079 Patent, evidenced by its Paragraph IV certification, and the assertion that Fera has "no reasonable basis for believing" its product would not infringe (Compl. ¶23). This allegation is based on alleged pre-suit knowledge of the patent and the asserted infringement.

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

  1. A central evidentiary question will be the factual determination of the accused product’s composition: What is the exact chemical structure and what are the physical properties of the solubilizing agent used in Fera's ANDA formulation? The case for infringement hinges on whether this agent is, in fact, a cyclodextrin derivative that meets all limitations of an asserted claim.

  2. The case will likely involve a significant claim construction dispute: Can the term "partially etherified β-cyclodextrin" be broadly construed to cover a wide range of derivatives, or will it be narrowed by the patent’s specific examples and its distinctions from prior art, potentially allowing Fera's specific formulation to fall outside the patent's scope?

  3. A key validity question will be whether Fera can meet its high burden of proving by clear and convincing evidence that the asserted claims are invalid, particularly given that the patent's core claims have already survived an ex parte reexamination, which strengthens their presumption of validity.