API and IP Newsletter

 

Contents

P-IV filing by generic companies.


We follow ANDA submissions with P-IV filings. One can find everything about P-IV certification in ANDA filings here.

Recently 4 ANDAs were submitted on NCE-1 date for Tafamidis 61 MG capsule. NCE-1 date was in May 2023.

Tafamidis is medication used to delay disease progression in adults with certain forms of transthyretin amyloidosis i.e., stiff heart syndrome. 

Patent Data listed in OB for Tafamidis 61 MG capsule is as below.

Patent No

Patent Expiration

Drug Substance

Drug Product

Patent Use Code

7214695

04/27/2024

DS

DP


7214696

12/19/2023



U-2524

9770441

08/31/2035

DS

DP

U-2524


Exclusivity Data is as below

Product No

Exclusivity Code

Exclusivity Expiration

001

NCE

05/03/2024

001

ODE-237

05/03/2026

 

The date of ANDA filing for Tafamidis could be found  here.

We tried to find out who all would be these 4 ANDA filers, it could be only an educated guess. 

There are more than 20 DMFs. Any four of them could have filed ANDA.

DMF list is as follows.


SUBMIT DATE

HOLDER

SUBJECT

3/31/2023

NEULAND LABORATORIES LTD

TAFAMIDIS (FORM-4)

3/27/2023

GLENMARK LIFE SCIENCES LTD

TAFAMIDIS   

2/21/2023

DR REDDYS LABORATORIES LTD

TAFAMIDIS MEGLUMINE

2/8/2023

SS PHARMA LLC

TAFAMIDIS (CC)

1/5/2023

TEVA PHARMACEUTICAL INDUSTRIES LTD

TAFAMIDIS

12/28/2022

CIPLA LTD

TAFAMIDIS (I)

12/2/2022

AUROBINDO PHARMA LTD

TAFAMIDIS

11/30/2022

BIOPHORE INDIA PHARMACEUTICALS PVT LTD

TAFAMIDIS

11/28/2022

CIPLA LTD

TAFAMIDIS

10/18/2022

AURORE LIFE SCIENCES PRIVATE LTD

TAFAMIDIS

9/7/2022

AUROBINDO PHARMA LTD

TAFAMIDIS MEGLUMINE

8/16/2022

OPTIMUS DRUGS PRIVATE LTD

TAFAMIDIS MEGLUMINE

6/24/2022

BIOPHORE INDIA PHARMACEUTICALS PVT LTD

TAFAMIDIS MEGLUMINE

6/3/2022

AURORE LIFE SCIENCES PRIVATE LTD

TAFAMIDIS MEGLUMINE

3/31/2022

GLENMARK LIFE SCIENCES LTD

TAFAMIDIS MEGLUMINE

11/3/2021

NEULAND LABORATORIES LTD

TAFAMIDIS MEGLUMINE

9/18/2020

SS PHARMA LLC

TAFAMIDIS

8/5/2020

SS PHARMA LLC

TAFAMIDIS MEGLUMINE

3/30/2020

MSN LABORATORIES PRIVATE LTD

TAFAMIDIS

3/28/2020

MSN LABORATORIES PRIVATE LTD

TAFAMIDIS MEGLUMINE


Many companies filed patent applications with different polymorphs, processes, salts.


Applicant

Publication Number

Application relates to

Publication Date

Aurobindo Pharma Limited

IN202041011872A

Process for preparing tafamidis.

2021-09-24

Azad Pharma AG

US11208391B2

Preparing tafamidis meglumine (dichlorophenyl)-benzoxazole-carboxylic acid 

2021-12-28

Biophore India 

IN202141016881A

Preparing tafamidis meglumine  presence of base and acid

2022-10-14

Cipla Limited

WO2022185333A1

New crystalline form C1 of tafamidis

2022-09-09

Crystal Pharmaceutical 

US20210363116A1

Crystal form CSV of tafamidis

2021-11-25

Crystal Pharmaceutical 

WO2021232619A1

New crystalline form CSVIII of tafamidis free acid 

2021-11-25

CVR Life Sciences 

IN202141030606A

Preparing tafamidis meglumine derivative,  solvent, insitu reacting carboxylic acid derivative with meglumine salt

2023-02-03

Dr. Reddys Laboratories 

WO2022239020A1

New crystalline Form TLP of Tafamidis 

2022-11-17

Dr Reddys Laboratories 

IN202041049413A

New crystalline form T5 of tafamidis 

2022-05-13

Dr Reddys Laboratories 

IN202141030495A

New crystalline form T7 or form 8 of tafamidis 

2023-01-13

Dr. Reddys Laboratories 

WO2021152623A1

One-pot process for preparing tafamidis 

2021-08-05

Glenmark Life Sciences 

WO2022084790A1

Preparing crystalline form 4 of tafamidis 

2022-04-28

Honour Lab Limited

WO2022264072A1

New tafamidis crystalline form HN1 

2022-12-22

Honour Lab Limited

WO2021019448A1

Preparing tafamidis meglumine 

2021-02-04

Jubilant Generics 

IN202111041818A

Preparing tafamidis and/or its salts

2023-03-17

Msn Laboratories 

IN202041005729A

New crystalline form-R of tafamidis 

2021-08-13

Natco Pharma 

WO2022107166A1

Preparation crystalline Form-N1 of tafamidis

2022-05-27

Natco Pharma 

IN202041051430A

Preparation of crystalline form of tafamidis 

2022-01-21

Neuland Laboratories

IN202041020352A

Preparation of Tafamidis meglumine 

2021-11-19

Neuland Laboratories 

IN202041038234A

New crystal form N of tafamidis free acid 

2020-09-25

Optimus Drugs 

IN202141031135A

Preparing Tafamidis

2023-01-13

Sawai Pharmaceutical 

US20220370365A1

Solid preparation containing tafamidis 

2022-11-24

Shanghai Xinlitai 

CN113735792A

Preparing tafamidis 

2021-12-03

Agarwal Nikhil

IN202321033563A

Analysing tafamidis involves preparing a mobile phase 

2023-06-16

Synthon B.V.,Nl

WO2023020762A1

Tafamidis nicotinamide adduct 

2023-02-23

Teva Pharmaceuticals 

US20220259162A1

New crystalline form of tafamidis designated as form V

2022-08-18

Teva Pharmaceuticals 

WO2023091534A1

New crystalline form of tafamidis 

2023-05-25

Hunan First Normal Uni

CN115286591A

Synthetic method of medicine Tafamidis 

2022-11-04

Hunan First Normal  Uni

CN113277993A

Synthesizing Tafamidis derivative 

2021-08-20

Hunan First Normal Uni

CN113321627B

New tafamidis derivative

2022-05-24

Hunan First Normal Uni

CN114057662A

Synthesis of tafamidis 

2022-02-18

Hunan First Normal Uni

CN114369071A

Preparing tafamidis intermediate 

2022-04-19

Zunyi Medical Uni

CN113372290A

Preparing tafamidis, comprises  4-amino-3-hydroxybenzoic acid 

2021-09-10


It is interesting to note, the innovator has protected Form-1 till 2035. Hence, all those patent applications holders with different polymorphs and have filed DMFs with different polymorphic forms would be of interest for four ANDA filers.


Following companies imported US innovator samples ie 61 MG capsules 


Name of company

Import dates

AUROBINDO PHARMA LTD

2021-02-06


2021-04-30


2022-06-04



BIOPHORE INDIA PHARMACEUTICALS PRIVATE LIMITED

2023-03-03



CADILA HEALTHCARE LTD

2021-07-01


2021-10-20



CIPLA LIMITED

2022-03-17


2022-07-09


2022-12-20


2023-01-21


2023-01-28


2021-06-24


2023-04-11



DR.REDDY'S LABORATORIES LTD 

2021-07-12



HETERO LABS LIMITED

2022-07-23



STRIDES PHARMA SCIENCE LIMITED

2022-05-29



SUN PHARMACEUTICAL INDUSTRIES LIMITED

2020-04-27


2021-10-23


2022-03-05


2022-12-14


2022-12-16



ZYDUS LIFESCIENCES LIMITED

2022-08-27




So, there would be high likelihood that 4 ANDA companies could have been among these 8 importers of US innovator samples. Looking at the import dates and sample quantity, could one say Sun, Cipla, DRL and Cadila would be ahead of the rest? 


Still, it would be very difficult to guess 4 ANDA filers today. Once Pfizer starts notifying generics then it will be publicly known who all have filed ANDAs on NCE-1 date and would potentially be able to share 180 days exclusivity. We will cover that news too and then we will comment whether our guess is right!


General information


ABIONYX Pharma Successfully Manufactures a Second Batch of Recombinant Human ApoA-I CER-001 Using a New, Innovative and Robust Industrial Bioprocess

  • Demonstrated success for the industrial biomanufacturing of CER-001, one of the most advanced biomedicines

  • Confirmation of improved yield and simplification of the biomanufacturing process

  • Positioning on the biomanufacturing trajectory requiring 3 consecutive batches for Marketing Authorization

News here.


Jardiance approved in EU for the treatment of adults with chronic kidney disease

Key highlights:

  • Chronic kidney disease (CKD) affects 850 million people worldwide, 47 million in the EU, doubles a person’s risk for hospitalisation and is a leading cause of death.

  • Jardiance (empagliflozin) is the first SGLT2 inhibitor to demonstrate a statistically. significant reduction in all-cause hospitalisations in people with CKD vs. placebo

  • The approval in CKD adds to existing indications in type 2 diabetes and heart failure; these interconnected conditions affect over 1 billion people worldwide.

News here


Intellectual Property 


Amgen Vs Sandoz


OB listed patents are as below: 


Patent No

Patent Expiration

Drug Substance

Drug Product

Patent Use Code

Submission Date

6962940

03/19/2023



U-1504 U-2656 U-2658 U-3276

04/15/2014

7208516

03/19/2023



U-1505

04/15/2014

7427638

02/16/2028

DS

DP


04/15/2014

7659302

03/19/2023



U-1505 U-1595 U-2658 U-3276

04/15/2014

7893101

12/09/23

DS

DP


04/15/2014

8455536

03/19/2023



U-1505 U-1595 U-2658 U-3276

04/15/2014

8802717

03/19/2023



U-1561

08/29/2014

9018243

03/19/2023



U-1505 U-1595 U-2656 U-2658 U-3276

05/18/2015

9724330

03/19/2023



U-1561 U-1595 U-2656 U-2658 U-3276

07/19/2018

9872854

05/29/2034



U-2232 U-2233

02/21/2018

10092541

05/29/2034



U-2403 U-2659

10/09/2018


Sandoz submitted an ANDA seeking approval from the FDA to market a generic version of apremilast. Celgene, the original plaintiff. In February 2020, Amgen was substituted as plaintiff.


Celgene, the original plaintiff, brought this Hatch-Waxman suit, asserting that Sandoz’s generic product would infringe the ’638 and ’101 patents. After the ’541 patent issued, Celgene asserted infringement of that patent as well.


This write-up is only for `638 patent.


  1. At the district court, Amgen asserted infringement of claims 3 and 6 of `638. In response, Sandoz alleged that those claims were invalid as obvious over U.S. Patent 6,020,358 (the “’358 patent”) and PCT application WO 01/034606 (the “’606 application”). 

  2. The ’358 patent is the first U.S. patent describing a racemic mixture containing apremilast, and it claims a genus of phosphodiesterase inhibitors, including a racemic mixture containing apremilast. 

  3. The ’358 patent discloses seventeen example compounds that fall within the scope of the claimed genus. 

  4. Example 12 of the ’358 patent is a racemic mixture comprised of 50% of the (+) enantiomer of 2-[1-(3-ethoxy-4-methoxyphenyl)-2- methylsulfonylethyl]-4-acetylaminoisoindoline-1,3-dione and 50% of the (-) enantiomer. The (+) enantiomer is apremilast. 

  5. The ’358 patent more generally discloses that racemates can be separated into individual enantiomers. 

  6. The ’606 application is directed to a group of phosphodiesterase inhibitors and teaches that the individual enantiomers of racemic mixtures can be separated. Sandoz asserted the ’606 application as reinforcing the teachings disclosed in the ’358 patent. 

  7. The district court held that Sandoz had failed to show by clear and convincing evidence that claims 3 and 6 would have been obvious over the ’358 patent and the ’606 application. 

  8. In particular, the court found that Sandoz failed to meet the burden of establishing that the ’358 patent and the ’606 application gave a skilled artisan reason or motivation to resolve the Example 12 racemic mixture into its enantiomers, further finding that there was not sufficient evidence to conclude that a skilled artisan would have had reason to believe that the desirable properties of Example 12 derived in whole or in part from the apremilast enantiomer (i.e., the (+) enantiomer). 

  9. The court also concluded that Sandoz had not demonstrated that a skilled artisan would have had a reasonable expectation of success in resolving Example 12 into its individual enantiomeric components. Thus matter had reached to the appellate Court, ie CAFC. 


Before trial, Sandoz (and Zydus too) had acknowledged that their generic versions of Otezla infringe the asserted claims of U.S. Patent No. 7,427,638 (`638).


Further in this write-up, we will cover CAFC’s opinion about `638 patent and whether the district court had erred while handed down the decision.


Asserted claim 3 of the ’638 patent reads as follows: 


3. The pharmaceutical composition of claim 2 [A pharmaceutical composition comprising stereomerically pure (+)-apremilast, or a pharmaceutically acceptable salt, solvate or hydrate, thereof; and a pharmaceutically acceptable carrier, excipient or diluent, wherein said pharmaceutical composition is suitable for parenteral, transdermal, mucosal, nasal, buccal, sublingual, or oral administration to a patient], wherein said pharmaceutical composition is suitable for oral administration to a patient. 


Asserted claim 6 of the ’638 patent reads as follows: 

6. The pharmaceutical composition of claim 5 [A pharmaceutical composition comprising stereomerically pure (+)-apremilast, or a pharmaceutically acceptable salt, solvate or hydrate, thereof; and a pharmaceutically acceptable carrier, excipient or diluent, wherein said pharmaceutical composition is suitable for parenteral, transdermal, mucosal, nasal, buccal, sublingual, or oral administration to a patient, wherein the amount of stereomerically pure (+)-apremilast is from 1 mg to 1000 mg, wherein the amount of stereomerically pure (+)-apremilast is from 5 mg to 500 mg], wherein the amount of stereomerically pure (+)-apremilast is from 10 mg to 200 mg.


  1. CAFC agreed with Amgen that the district court did not err in finding that claims 3 and 6 of the ’638 patent were not shown to have been obvious by a standard of clear and convincing evidence over the ’358 patent and the ’606 application. 

  2. CAFC found no clear error in the court’s holding that Sandoz did not meet its burden of establishing that the prior art gave a skilled artisan reason or motivation to resolve the Example 12 racemic mixture into its enantiomers, to conclude that a skilled artisan would have had reason to believe that the desirable properties of the Example 12 racemic mixture derived in whole or in part from the apremilast isomer, or that a skilled artisan would have had a reasonable expectation of success in resolving the mixture of Example 12. 

  3. In making these findings, the court appropriately credited the statements of both Amgen’s and Sandoz’s experts, finding the statements of Amgen’s expert more persuasive. 

  4. Included in that testimony was information establishing that resolving a racemic mixture is a difficult process based on trial-and-error experimentation and that using chiral chromatography to resolve the Example 12 racemic mixture into its enantiomers would require a skilled artisan to find an appropriate solvent system for the chiral column, of which there were many possible options at the time the invention was made. 

  5. The CAFC further agreed with Amgen, and subsequently affirmed the district court’s finding, that there is no clear error in the district court’s finding of a nexus between the unexpected potency of apremilast and claims 3 and 6 of the ’638 patent

  6. Further, the unexpected properties of a compound necessarily have a nexus to that compound. 

  7. First, the district court did not err in determining that, before apremilast, there was a long-felt need for a psoriasis treatment that was suitable for oral administration to a patient without the risks and barriers to adherence that were common with other psoriasis treatments. 

In making this finding, the court credited expert testimony establishing that topical treatments, including creams and ointments, had several drawbacks for patients suffering from moderate to severe psoriasis, including messiness, difficulty of application to large areas of affected skin, inability to treat associated psoriatic arthritis, and the tendency for topicals to lose efficacy over time. 

  1. The credited expert testimony also established that older oral systemic treatments had their own compliance barriers, including treatments that required lab monitoring before, during, and sometimes after treatment, and for being contraindicated in immunosuppressed patients.

  2. The CAFC also found no clear error with respect to the district court’s findings that others in the field had tried and failed to develop other PDE4 inhibitors, including expert testimony establishing that many PDE4 inhibitors failed to progress in experimentation and trials or were not sufficiently effective at tolerable doses. 

  3. The CAFC also found no clear error in the court’s finding that there was industry and regulatory scepticism about the safety of apremilast because of its structural similarity to thalidomide, evidenced by credited expert testimony or that Otezla has achieved commercial success since receiving FDA approval, based on credited expert testimony from Amgen’s economic expert.

  4. In summary, the district court did not err in opining that claims 3 and 6 of the ’638 patent would not have been obvious over the ’358 patent or the ’606 application. 


Accordingly, the CAFC affirmed the district court’s holding that Sandoz did not meet its burden to show by clear and convincing evidence that claims 3 and 6 of the ’638 patent would have been obvious over the ’358 patent and the ’606 application.


In this case, in fact, three of Amgen's patents were the subject of the appeal. The appellate court (CAFC) upheld the validity of U.S. Patent No. 7,427,638, which claims pharmaceutical compositions of apremilast, and U.S. Patent No. 7,893,101, which claims a crystalline form of apremilast, but ruled against Amgen on U.S. Patent No. 10,092,541, which claims methods of treating psoriasis with apremilast according to a specific dosing schedule. 


We will cover CAFC’s decision about other patents (viz `101 and `541) in subsequent write-ups. 



Decision here











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