API and IP Newsletter

 

Content

• The analysis of patent applications filed by Hetero Drugs. 

• General information. 

• Pfizer court fight could legalize Medicare copays and unleash ‘gold rush’ in sales. 

• Data integrity challenges in the UK pharmaceutical sector. 

• Intellectual Property. 

• Dapsone Case in Delaware Court

 

The analysis of patent applications filed by Hetero Drugs

In SIDVIM, we analyse patent portfolio of many companies. This month we chose Hetero drugs and its subsidiary companies. We analysed patent publications in last five years, i.e., publications post 2016. This means patent applications must have been filed 18 months prior to the publication. 

Some interesting observations are listed in the table below for publications in 2016 and 2017. For this analysis we considered only PCT applications published during this period. There are about 30-40 applications, and we are covering some of those here.  

Publication Number	Invention relates to	SIDVIM analysis
WO2016147108A1	Delayed release capsule dosage form used for treating patients with relapsing forms of multiple sclerosis comprises tablets comprising dimethyl fumarate and excipient	Hetero is not validating this application in key markets. This delayed release capsule formulation of dimethyl fumarate must not be serving desired purpose.
WO2016147099A2	New amide-containing triterpenone derivative used in pharmaceutical composition for preventing, ameliorating or treating viral mediated disease, disorder or syndrome in subject	This family relates to derivatives of betulinic acid (anti-HIV compounds), which is isolated from Syzygium clavifolium. Hetero validated only in US.
WO2016166720A2	New afatinib dimaleate crystalline forms comprising H1, H2 and H3 forms with specified powder X-ray diffraction peaks are e.g. epidermal growth factor receptor tyrosine kinase inhibitors, used to treat e.g. breast cancer and neck cancer	This family mainly relates to process for the preparation of afatinib dimaleate and its polymorphic forms in some jurisdictions. This family is validated in many countries and afatinib must be very interesting for Hetero from marketing point of view. In US, one cannot expect Gx very soon.
WO2016178092A2	New triterpenone derivative used in pharmaceutical composition used for viral-mediated disease, disorder or syndrome e.g. HIV infection, HBV infection and HCV infection	This family covers novel anti-HIV compound as that of WO2016147099A2 family above. The only difference, this family is validated in many countries. Certainly, it looks like these compounds are very interesting for Hetero. No relevant data could be found out which could corelate these compounds with ongoing clinical studies. This compound must be in very early phase of clinical development.
WO2016199049A1	Preparing ledipasvir comprises reacting substituted fluorenyl-imidazolyl-azaspiro-heptane-carbonyl-methylpropyl-carbamic acid methyl ester with substituted benzoimidazolyl-azabicyclo-heptane-carbonyl-methylpropyl-carbamic acid methyl ester	This application was abandoned after publication, Hetero must be convinced that this Ledipasvir process is not of any commercial importance.
WO2017017630A1	New betulinic substituted amide derivatives used to treat e.g. viral mediated disease, disorder or syndrome comprising HIV infection, hepatitis B virus infection, retroviral infection genetically related to AIDS and respiratory disorders	This family relates to some more betulinic acid derivatives as anti-HIV agents. However, it seems, the compounds reported in this family are not interesting for Hetero. This family is abandoned after securing FTO.
WO2017021922A1	New substituted amides of triterpene derivatives, used to prevent, ameliorate or treat viral mediated disease, disorder or syndrome e.g. HIV infection, respiratory disorder i.e. adult respiratory distress syndrome and inflammatory disease	Some more betulin derivatives but family is abandoned after securing FTO. Hetero must be convinced about lack of anti-HIV activity of these compounds after its publication.
WO2017025901A1	New substituted triterpene derivatives useful for preventing or treating viral mediated disease, disorder or syndrome e.g. HIV infection, hepatitis B, hepatitis C, retroviral infection genetically related to AIDS and respiratory disorders	Some more betulinic acid derivatives, which are abandoned, must be due to lack of anti-HIV activity.
WO2017025899A1	New substituted fused-cyclic compounds used to treat HIV infection, hepatitis B virus infection, hepatitis C virus infection, retroviral infection genetically related to AIDS, adult respiratory distress syndrome and/or inflammatory disease	Some more derivatives of natural compound betulinic acid, which are abandoned.
WO2017037591A1	Preparing amorphous form of sacubitril/valsartan sodium salt i.e. used to treat heart failure, comprises reacting sacubitril with valsartan in solvent, adding sodium, adding alcohol, ester or hydrocarbon solvent, isolating, and purifying	This family relates to a stable amorphous form of Sacubitril/Valsartan sodium salt and its composition. This family must be covering commercial API and FDF of Hetero. This application is validated in many jurisdictions.
WO2017055935A1	Amorphous co-precipitate (solid dispersion) useful for treating premenopausal women with acquired or generalized hypoactive sexual desire disorder, comprises flibanserin free base and excipient	This family was protecting composition comprising an amorphous co-precipitate (solid dispersion) of flibanserin. This is abandoned now and must not be delivering desired results for Hetero.

Conclusion: Herero could be in possession of few novel betulinic acid derivatives as anti-HIV agents. They would be testing water with some kind of clinical studies. Mostly `092 patent family is covering some of those compounds. GSK is also very active in similar compounds!

 

General information 

Pfizer court fight could legalize Medicare copays and unleash ‘gold rush’ in sales

Three years ago, pharma giant Pfizer paid $24 million to settle federal allegations that it was paying kickbacks and inflating sales by reimbursing Medicare patients for out-of-pocket medication costs.

By making prohibitively expensive medicine essentially free for patients, the company induced them to use Pfizer drugs even as the price of one of those medicines, covered by Medicare and Medicaid, soared 44% to $225,000 a year. Now Pfizer is suing to legalize essentially the same practice it was accused of three years ago. (Read more) 

Data integrity challenges in the UK pharmaceutical sector

The cost of meeting data integrity requirements is considerable, and for some, the risk of penalties will be offset by not investing in new equipment. Yet this attitude has been shown to have far-reaching complications, hitting share prices and big-name reputations. Those more risk-averse may opt for cheaper systems, though these can prove a false economy when ongoing validation work drives up the overall cost. (Read more)

 

Intellectual Property 

Dapsone Case in Delaware Court

Patentee (Almirall) holds NDA for Aczone®(Dapsone) gel, 7.5%. Torrent filed ANDA. The case was in Delaware Court. Though there are few other aspects which were discussed during the case, mainly case revolved around Prosecution history estoppel.  

What is prosecution history estoppel? 

1. Prosecution history estoppel applies as part of an infringement analysis to prevent a patentee from using the doctrine of equivalents to recapture subject matter surrendered from the literal scope of a claim during prosecution

2. Argument-based prosecution history estoppel bars a patent owner from asserting equivalents for a claim element when that assertion would contradict statements made to the patent examiner while obtaining the patent.

3. Statements may give rise to estoppel even if they were not made for the purpose of securing allowance of the patent claims.

4. For argument-based prosecution history estoppel to apply, the surrender of equivalents must be "clear and unmistakable." 

Almirall listed the '219 patent in OB. 

1. Both independent claims of the '219 patent require the pharmaceutical compositions to have "a polymeric viscosity builder comprising acrylamide/sodium acryloyldimethyl taurate copolymer."

2. Torrent's ANDA product does not contain acrylamide/sodium acryloyldimethyl taurate copolymer. Instead, Torrent's ANDA product contains carbomer homopolymer type C, also known as Carbopol®

3. In this case, the prosecution history clearly and unmistakably demonstrates that the applicant surrendered Carbopol® as an equivalent for the claimed acrylamide/sodium acryloyldimethyl taurate

4. During the prosecution, the applicant stated:

The instant claims recite a new formulation of dapsone wherein the active ingredient is about 7.5 % w/w dapsone and an entirely new thickening agent is employed. The new formulation of the instant claims does not include a carbomer such as Carbopol®, but instead utilizes acrylamide/sodium acryloyldimethyl taurate copolymer and at a much higher concentration.

5. These unambiguous statements in the prosecution history meet the high bar for a "clear and unmistakable" surrender of Carbopol® as a possible equivalent for acrylamide/sodium acryloyldimethyl taurate

6. Torrent's argument is that since Almirall told the Patent Office that its invention required acrylamide/sodium acryloyldimethyl taurate, and not Carbopol, as the polymeric viscosity builder, and that acrylamide/sodium acryloyldimethyl taurate has unexpected advantages over Carbopol, it disclaimed Carbopol and a reasonable competitor is entitled to rely on these representations. 

AND The Court upheld Torrent’s argument.

Decision here.

Disclaimer

Sidvim LifeSciences Private Ltd has taken due care and caution in developing this document. Since the data used for analysis in this document is based on the information available in the public domain, its adequacy or accuracy or completeness cannot be guaranteed. This document is for information only and Sidvim is not responsible for losses that may or may not arise due to any decisions made based on the same. No part of the document shall constitute or be represented as a legal opinion of any kind or nature. No warranties or guarantees, expressed or implied, are included in or intended by the document, except that it has been prepared in accordance with the current generally accepted practices and standards consistent with the level of care and skill exercised under similar circumstances by professional consultants or firms that perform the same or similar services.