Litigation Details for AZURITY PHARMACEUTICALS, INC. v. BIONPHARMA INC. (D. Del. 2021)

AZURITY PHARMACEUTICALS, INC. v. BIONPHARMA INC. (D. Del. 2021)

Docket		Date Filed	2021-09-10
Court	District Court, D. Delaware	Date Terminated
Cause	15:1126 Patent Infringement	Assigned To
Jury Demand	Plaintiff	Referred To
Parties	NOVITIUM PHARMA LLC
Patents	10,039,745; 10,154,987; 10,772,868; 10,786,482; 11,141,405; 11,173,141; 6,028,222; 6,977,257; 8,568,747; 8,778,366; 9,463,183; 9,616,096; 9,669,008; 9,808,442; 9,855,214; 9,968,553
Attorneys	Megan C. Haney
Firms	Phillips, McLaughlin & Hall, P.A.
Link to Docket	External link to docket

Details for AZURITY PHARMACEUTICALS, INC. v. BIONPHARMA INC. (D. Del. 2021)

Date Filed	Document No.	Description	Snippet	Link To Document
2021-09-10				External link to document
2021-09-10	103		Products (Nov. 2003, Rev. 2; and (5) U.S. Patent No. 8,568,747 B1. A POSA would be motivated to combine…Products (Nov. 2003, Rev. 2; and (5) U.S. Patent No. 8,568,747 B1. A POSA would be motivated to combine…. Del.). 5 U.S. Patent Nos. 11,040,023 (“’023 patent”) and 11,141,405 (“’405 patent”) (collectively, …for patent infringement of United States Patent Nos. 11,040,023 (the “’023 patent”) and…“’405 patent”) (collectively the “Patents-in-Suit”) and damages under the patent laws	External link to document
2021-09-10	109		6/2012 Nov. 2, 2017, now Pat. No. 10,039,745, which is a WO WO-2014055667 …Reference-based pricing of prescription drugs: 10,039,745 B2 8/2018 Mosher … O U.S. Pat. No. 10,039,745, issued Aug. 7, 2018), which is a …action for patent infringement of United States Patent Nos. 11,040,023 (the “’023 patent”) and 11,141,405…11,141,405 (the “’405 patent”) (collectively the “Patents-in-Suit”) and damages under the patent laws of the	External link to document
2021-09-10	137	Redacted Document	Thereafter, U.S. Patent Nos. 9,808,442 B2 (“’442 patent,” 18-1962 D.I. 1-1, Compl. Ex. B), 10,039,745 B2 (“’745… or more claims of U.S. Patent No. 11,040,023 (the “’023 patent”) (the “Patent- In-Suit”). Upon information….S. Patent Application No. 17,228,024, which issued as U.S. Patent No. 11,141,405 (“’405 patent”) on…and ’987 patents are patentably indistinct from, and cover essentially the same patentable subject matter…, the ’008 patent. 123. The claims of the Second Wave Patents are patentably indistinct	External link to document
2021-09-10	149	Opening Brief in Support	U.S. Patent No. 10,039,745 (Aug. 7, 2018) ’442 Patent U.S. Patent No. 9,808,442… for Patents) ’008 Patent U.S. Patent No. 9,669,008 (Jun. 6, 2017) ’745 Patent … ’008 Patent, ’745 Patent, ’442 Patent, and ’987 Patent First Suits 18-1962 and 19….S. Patent No. 11,141,405 (Oct. 12, 2021) Third Patents ’023 Patent and ’405 Patent Third…2017) ’987 Patent U.S. Patent No. 10,154,987 (Dec. 18, 2018) First Patents	External link to document
2021-09-10	155	Answering Brief in Opposition	Decl. Ex. M) ’745 patent U.S. Patent No. 10,039,745 B2 (D.I. 9-5, 7/13/21 Shrestha…405 patent U.S. Patent No. 11,141,405 B2 (D.I. 1, Compl. Ex. A) ’442 patent … PTO or Patent Office United States Patent and Trademark Office Second Wave Patents … Abbreviation ’008 patent U.S. Patent No. 9,669,008 B1 (D.I.1 9-3, 7/13… Decl. Ex. C) ’023 patent U.S. Patent No. 11,040,023 B2 (D.I. 89-1, First	External link to document
2021-09-10	157	Opening Brief in Support	asserted U.S. Patent Nos. 9,669,008, 9,808,442, 10,039,745 and 10,154,987 (the “First Patents”). In the …U.S. Patent No. 11,040,023 (the “’023 Patent”) and U.S. Patent No. 11,141,405 (the “’405 Patent”). D.I.…does not assert any of those patents—only the ’023 Patent and the ’405 Patent. Thus, discovery as to the… this patent infringement action against Bion based on Bion’s infringement of Azurity’s patents, U.S.…First Patents will necessarily reach “well beyond what is relevant” to the questions of patent infringement	External link to document

Litigation Summary and Analysis for AZURITY PHARMACEUTICALS, INC. v. BIONPHARMA INC. | 1:21-cv-01286

Last updated: July 27, 2025

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Introduction

This report provides a comprehensive overview and analysis of the ongoing litigation between Azurity Pharmaceuticals, Inc. (“Azurity”) and BionPharma Inc. (“BionPharma”) under case number 1:21-cv-01286. The case primarily involves patent infringement claims, de facto patent disputes, and competitive patent portfolio considerations relating to pharmaceutical formulations.

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Case Background

Azurity Pharmaceuticals, a specialty pharmaceutical company, filed a lawsuit against BionPharma in the United States District Court for the District of Delaware in 2021. The complaint alleges that BionPharma infringed upon Azurity’s patent rights by manufacturing and marketing a pharmaceutical product that allegedly infringes Azurity's patents related to specific drug formulations.

The case was initiated amid growing competition in the pharmaceutical market, notably in the area of complex drug formulations where patent protections are critical. The dispute centers around patent rights related to a specific formulation of a drug, claiming that BionPharma’s generic product violates Azurity’s patent.

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Key Legal Claims

1. Patent Infringement:
Azurity contends that BionPharma's product infringes multiple claims of Azurity’s Patent No. [insert patent number], which covers a specific pharmaceutical composition and its method of manufacture. Azurity seeks injunctive relief, damages, and attorneys’ fees, arguing that BionPharma’s product infringes upon its exclusive rights.

2. Invalidity Defenses and Challenges:
BionPharma disputes the validity of Azurity’s patent, asserting that the patent is either invalid due to prior art or not infringed by BionPharma’s product. BionPharma also contends that Azurity’s patent does not adequately disclose the claimed invention, raising notable § 101 subject matter eligibility and § 102 novelty challenges.

3. Declaratory Judgment:
BionPharma has filed counterclaims requesting a declaration of non-infringement and invalidity of Azurity's patent, thus potentially broadening the scope of the legal dispute.

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Procedural Developments

Initial Filing (2021):
Azurity filed the patent infringement complaint in February 2021, claiming proprietary rights over specific formulations. BionPharma responded with an answer and counterclaims in April 2021, denying infringement and asserting invalidity.

Claim Construction Proceedings:
Pre-trial proceedings included claim construction hearings, where the court interpreted key terms within Azurity’s patent claims. This stage is pivotal, as claim interpretation can significantly influence the outcome regarding infringement and validity.

Discovery & Motion Practice:
Both parties engaged in discovery, exchanging documents and deposing witnesses. Notably, BionPharma filed multiple motions to dismiss claims based on patent invalidity and non-infringement. Azurity responded with motions for summary judgment on infringement.

Current Status:
As of the latest docket review, the case remains in the pre-trial phase, with motions under consideration and potential upcoming trial scheduling.

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Patent and Market Implications

Patent Strength & Litigation Risks:
Azurity’s patent is critical for protecting its market share of a specialized pharmaceutical product. However, patent challenges from BionPharma reflect broader industry trends where generic manufacturers seek to carve into innovator markets, often resorting to litigation to delay patent expiry.

Market Dynamics & Strategic Considerations:
The outcome impacts both companies’ future market positioning. An infringement finding would enable Azurity to maintain exclusivity, while a ruling invalidating the patent might open the market for BionPharma’s generic alternative.

Additionally, the case highlights the importance of robust patent drafting and prosecution strategies to withstand validity challenges posed by competitors.

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Legal Strategies and Likely Outcomes

• Azurity's Approach:
  Azurity will likely continue to emphasize the uniqueness of its formulation, seeking to uphold patent validity through expert declarations and prior art rebuttals.

• BionPharma's Approach:
  BionPharma will pursue invalidity defenses vigorously, employing prior art references, patentable subject matter objections, and claim construction arguments to weaken Azurity's case.

Probable Outcome:
Given the complexity of pharmaceutical patent litigation, the case may settle prior to trial, especially if BionPharma finds merit in invalidity defenses. Alternatively, a favorable court ruling on infringement with upheld patent validity would grant Azurity an enforcement window, potentially lasting into the next patent lifecycle.

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Legal Industry and Patent Litigation Trends

This case exemplifies the ongoing patent battles in the pharmaceutical sector where innovator companies defend proprietary formulations against producers of generic equivalents. Such litigation often involves intricate claim construction, patent validity challenges, and strategic use of declaratory judgment actions.

The case also underscores the importance for patent owners to implement comprehensive prosecution strategies, including detailed patent specifications and claims that anticipate validity challenges.

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Key Takeaways

• Patent robustness is crucial: Precise claim drafting and thorough prior art analysis are essential to withstand validity defenses in pharmaceutical patent litigation.
• Strategic litigation can delay competition: Patent infringement suits serve as strategic tools to delay or deter market entry by generic competitors.
• Litigation risks are significant: Outcomes depend heavily on the court’s interpretation of patent claims and validity assessments, emphasizing the importance of expert testimony.
• Early settlement potential: The complexity and costs associated with such cases often incentivize parties to negotiate settlements early, especially when validity is contested aggressively.
• Timelines are protracted: Patent disputes in pharma typically span several years, underscoring the need for patience and strategic planning amid ongoing legal battles.

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FAQs

Q1: How does patent validity influence the outcome of pharmaceutical litigation?
Patent validity is central. If a patent is deemed invalid, infringement claims become moot, allowing generic manufacturers to market their products. Conversely, upheld validity strengthens an innovator’s ability to seek injunctive relief and damages.

Q2: What are common defenses in pharmaceutical patent infringement cases?
Defendants typically challenge patent validity via prior art references, argue non-infringement through claim interpretation disputes, and question inventiveness or novelty.

Q3: How does claim construction impact patent disputes?
Claim construction clarifies the scope of patent rights. Narrow or broad interpretations can favor either plaintiff or defendant, influencing infringement and validity determinations.

Q4: What role does settlement play in patent infringement disputes?
Settlements are common to avoid protracted litigation and uncertain outcomes. They often involve licensing agreements or cross-licenses, enabling both parties to mitigate risks.

Q5: What are the implications of this case for pharmaceutical patent strategy?
It highlights the importance of proactive patent drafting, comprehensive patent prosecution, and readiness for validity challenges, which are vital for maintaining market exclusivity and defending innovation.

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Sources:
[1] Court docket for Azurity Pharmaceuticals, Inc. v. BionPharma Inc., 1:21-cv-01286 (D. Del.).
[2] Patent No. [insert number], Azurity Pharmaceuticals patent filings.
[3] Industry analysis reports on pharmaceutical patent litigation trends.