The Bio/Pharma Beat September 2019
Highlighting the patent law developments you should know in biotech, biologics and pharmaceutical cases, legislation and federal agency actions in August, including:
Two Federal Circuit decisions concerning the "tangential relationship" exception to prosecution history estoppel
A district court decision rejecting a forward-looking analysis regarding the "acts of infringement" for determining proper venue in ANDA cases
A district court decision on JMOL, holding antibody claims met the "representative species" test for written description, but were invalid for lack of enablement
A district court opinion by Judge Bryson, sitting by designation, regarding infringement under the doctrine of equivalents
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The "Tangential Relationship" Exception to Prosecution History Estoppel
Ajinomoto Co., Inc. v. International Trade Commission, Nos. 20181590, 1629 (Fed. Cir. Aug. 6, 2019)
The Federal Circuit affirmed the International Trade Commission's (ITC) decision that the use of certain E. coli strains to produce L-tryptophan products did not infringe the patent in suit, while two other strains did. The court first affirmed the ITC's claim construction of "replacing the native promoter ... with a more potent promoter." The plain and ordinary meaning of "replace" did not encompass nucleotide substitution, and the prosecution history demonstrated that the patentee changed "alteration" to "replacing." The court, however, affirmed the ITC's decision that two other strains infringed under the doctrine of equivalents. The patentee met its burden in showing that the claim limitation bore only a "tangential relationship" to the "discernable objective reason for the narrowing amendment." The court also rejected respondent's function, way and result arguments. Regarding respondent's written description argument, the court held the patent disclosed both sufficient representative species of more potent promoters and sufficient common structural features of such promoters.
Courts Do Not Demand Perfection From Patent Prosecutors
Eli Lilly and Co. v. Hospira, Inc., Nos. 2018-2126, 2127 (Fed. Cir. Aug. 9, 2019)
The Federal Circuit held a claim directed to the administration of pemetrexed sodium not literally infringed by a different salt form (ditromethamine) because the claim called for the administration of the salt, not to the solution formed by dissolving the salt form, even though the solution may contain sodium cations. However, the product infringed under the doctrine of equivalents because the patentee's amendment during prosecution to limit the claim to a particular salt form "relates only tenuously to the reason for the narrowing amendment." The court rejected appellants "suggestion that Lilly must prove that it could not have drafted a claim that literally encompassed pemetrexed ditromethamine" as "unsupported by our precedent" and "excessive," stating "[w]e do not demand perfection from patent prosecutors, and neither does the Supreme Court." The court also agreed that Eli Lilly could not have dedicated the use of ditromethamine salt to the public, as the specification disclosed no such method.
Disclaimer Effectively Eliminates Claims Leaving Patent as if Claims Never Existed
Sanofi-Aventis U.S., LLC v. Dr. Reddy's Laboratories, Inc., Nos. 20181804; 1808; 1809 (Fed. Cir. Aug. 14, 2019)
The Federal Circuit vacated the district court's decision that one patent was invalid as obvious because there was no case or controversy regarding those claims when the district court decision was issued. The PTO instituted an IPR and found certain claims unpatentable in a proceeding overlapping with the litigation. SanofiAventis did not appeal that decision, and filed a statutory disclaimer of those claims. Despite that disclaimer, the district court concluded that a case or controversy regarding those claims still existed, and found them invalid. The Federal Circuit held that the disclaimer "effectively eliminated" the claims from the patent, leaving it "as if the disclaimed claims had never existed," mooting any infringement dispute. Turning to a second patent, the Federal Circuit affirmed the district court's finding of non-obviousness, referring to the generics' arguments as "convoluted" and "lack[ing] merit." There was no motivation to combine and defendants' specific arguments were "emblematic of hindsight reasoning." The court disagreed that "small changes to a compound are necessarily prima facie obvious."
Rigid Written Description Requirement Should Yield to Sensible Interpretation
Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories Fl., Inc., No. 2018-1221 (Fed. Cir. Aug. 15, 2019)
The Federal Circuit affirmed the district court's decision that one claim of one patent was not invalid for lack of written description. "While as a general matter written description may not be satisfied by so-called equivalent disclosure, in this case, buttressed by the district court's fact-finding, and where the so-called equivalence relates only to resultant dissolution parameters rather than operative claim steps, we affirm .... Rigidity should yield to flexible, sensible interpretation." The court reversed the district court's decision that other asserted claims were non-obvious. "The inescapable, real-world fact here is that people of skill in the art did combine bupropion and naltrexone for reductions in weight gain and reduced cravings goals closely relevant to weight gain" (emphasis in original). The court rejected Nalpropion's objective indicia argument: "Both drugs were known to affect weight loss, and combining them for this known purpose as claimed in the patents yields no unpredictable result."
Claim Directed at Not Treating Particular Patients Is Patent Ineligible
Ino Therapeutics LLC v. Praxair Distribution Inc., No. 2018-1019 (Fed. Cir. Aug. 27, 2019)
The Federal Circuit affirmed the district court's holding that the asserted claims of five patents were patent ineligible. The representative patent claim was directed to determining whether a neonate has left ventricular dysfunction thereby, being at increased risk of pulmonary edema and if so, not treating the patient. "In effect, the claim is directed to detecting the presence of LVD in a patient and then doing nothing but leaving the natural processes taking place in the body alone." This was "significant because a claim not to treat i.e., not to disturb these naturallyoccurring physiological processes with the LVD patient's body risks monopolizing the natural processes themselves."
"Wherein" Clauses Were Material to Patentability and Thus, Claim Limitations
Allergan Sales, LLC v. Sandoz, Inc., No. 2018-2207 (Fed. Cir. Aug. 29, 2019)
In this ANDA litigation, the district court construed the "wherein" clauses in dispute as claim limitations. The Federal Circuit affirmed the construction. The claimed invention, a formulation and methods of use, allowed for increased efficacy and safety, which was material to patentability, as shown in the specification and prosecution history.
Detailed Infringement Allegations Not Required in Complaint for Every Asserted Claim
Shire Viropharma Inc. v. CSL Behring LLC, No. 17-414-MSG (D. Del. Aug. 5, 2019)
In this brand-vs-brand litigation, the district court denied defendants' motion to dismiss the infringement allegations as to all dependent claims of the four patents-in-suit. More specifically, defendants argued that the second amended complaint only tied specific infringement allegations to the independent claims. The court rejected defendants' argument that precise infringement allegations for "each of the almost 130 dependent claims" were necessary as "attempt[ing] to impose too strict a pleading standard." Relying on Delaware precedent and taking notice of the district's local rules requiring early infringement contentions, the court denied the motion. https://compass.docketnavigator.com/api/documents/filing/ fa334132-e054-dde1-2212-e17e6edb14c4 (subscription required)
Denying Motion to Amend the Judgment After Change in ANDA Specification
Forest Laboratories, LLC v. SigmaPharm Laboratories, LLC, Civ. No. 14-1119-MSG (D. Del. Aug. 6, 2019)
Following trial and a finding of infringement, defendant altered its specification (time to disintegration) for the fifth time, and sought relief from the adverse judgment on the basis that its new specification would not infringe. After an extensive analysis, the district court denied defendant's motion to amend the judgment in its favor, but also denied without prejudice plaintiff's motion to enter final judgment. The court required the parties to meet and confer regarding whether final judgment should be entered as to the finding of infringement (on the fourth specification) or whether discovery would be reopened regarding infringement under the newest specification. https://compass.docketnavigator.com/api/documents/ filing/4d18a8e6-fec3-3cbe-044e-4b67f207d039 (subscription required)
Accord and Satisfaction Was Not an Assignment So No Common Ownership Existed for OTDP
Immunex Corp. v. Sandoz Inc., Civil Action No. 16-1118 (CCC) (D. N.J. Aug. 9, 2019)
In this biosimilar case pertaining to etanercept, the district court found the patents in suit not invalid. The district court agreed, rejecting the forward-looing analysis (intended future acts of infringement) adopted by other district courts. Even if the patentee "never made" the claimed fusion protein, "such contention is legally insignificant" since the claim language identifies the required elements and in conjunction with the specification, provide support of possession. The district court also rejected defendants' enablement and obviousness arguments. Finally, the court rejected defendant's obviousness-type double patenting arguments. As to a first challenge, the alleged reference patent was not available due to the safe harbor provision of section 121. Even if it were, however, the alleged reference patent claims relate to a p55 TNF receptor, which did not render obvious a p75 fusion protein. A second alleged reference patent was not commonly owned with the patent in suit. An accord and satisfaction agreement was not tantamount to an assignment of the patent in suit to Immunex. Again, however, even if it were, the district court found the claims of the patent in suit were patentably distinct. Finally, the court applied a "two-way" analysis to a third potential reference patent (also not commonly owned) and found the patents were patentably distinct. https://compass.docketnavigator.com/api/documents/ filing/4e7ff75e-a06a-1333-76d7-45b6c1a44aa5 (subscription required)
District Court Rejects Intended Future Acts as Basis for Venue
Valeant Pharmaceuticals North America LLC v. Zydus Pharmaceuticals Inc., Civil Action Nos. 18-cv-13635; 14305 (PGS) (LHG)
In this Hatch-Waxman litigation, plaintiffs filed suit against various Mylan entities in New Jersey, as well as a protective suit in West Virginia. Mylan sought dismissal based on improper venue, arguing the patent venue statute requires an infringement action must be filed "where the defendant has committed acts of infringement." The district court agreed, rejecting the forward-looking analysis (intended future acts of infringement) adopted by other district courts. Infringement occurred, according to the court, only in West Virginia (where the ANDA was submitted) or Maryland (where it was filed). The court also held that "because venue is improper for the infringement claims," it was for plaintiff's declaratory judgment claims as well. The court also stated that, in any event, it would decline to exercise declaratory judgment jurisdiction in view of the protective action. https://compass.docketnavigator.com/api/documents/ filing/2afdfad0-e87a-8ad3-13e5-ef044043cfd6 (subscription required)
Prosecution History Estoppel Bars Assertion of Infringement under the Doctrine of Equivalents
Sun Pharmaceutical Industries Ltd. v. Saptalis Pharmaceuticals, LLC, Civil Action No. 18-00648-WCB (D. Del. Aug. 19, 2019)
In this ANDA litigation, Judge Bryson, sitting by designation, granted defendants motion for summary judgment of non-infringement. While disputed issues of material fact precluded summary judgment as to some of defendant's theories, and the court rejected others (disclosure-dedication among them), the court found that prosecution history estoppel precluded plaintiff's equivalency argument. That the amendment in question was in the form of a preliminary amendment did not rescue plaintiff. The PTO had rejected the "identical subject matter" in the parent application and the prosecution of the parent and the child at issue here "were so closely related, both substantively and temporally, that in effect they were part of a single continuing proceeding." According to the court, the "most logical conclusion" was the patentee narrowed its claims "to preempt exactly the same obviousness rejection" raised in the parent. https://compass.docketnavigator.com/api/documents/ filing/3bf2379e-92aa-2444-07f8-788ad57e7368 (subscription required)
Inherent Anticipation of Method of Treatment Claims
Galderma Laboratories L.P., v. Teva Pharmaceuticals USA, Inc., No. 17-cv-1783-RGA (D. Del. Aug. 21, 2019)
In this ANDA litigation, the district court found each of the asserted claims invalid as anticipated. The prior art disclosed administering a 1%-5% range of ivermectin. The court held this was sufficient disclosure to anticipate the claimed 1% ivermectin method of treatment. Regarding claims containing efficacy limitations, the district court found those results were inherent in practicing the claimed method and the prior art. "The asserted claims consist of the same steps described in [the prior art] and are directed to the same use ... [t]herefore the claimed efficacies are nothing more than the `natural results flowing from the explicit disclosure'" of the prior art. https://compass.docketnavigator.com/api/documents/ filing/92835cac-7f09-061d-b62f-b3f01c474023 (subscription required)
District Court Upholds Jury Verdict and $155 Million Damages Award
Bayer Healthcare LLC v. Baxalta Inc., Civil Action No. 16-cv-1122-RGA (D. Del. Aug. 23, 2019)
Following a jury trial in this brand-vs-brand litigation concerning pegylated Factor VIII, the district court denied defendants' motion for JMOL and for a new trial. The jury awarded $155 million in reasonable royalty damages. The court first rejected defendants' enablement argument, holding that Baxalta could not meet its high burden to overturn the jury verdict although, the specification did not provide a specific example of non-random pegylation at lysine positions. The court similarly rejected defendants' obviousness argument. Regarding infringement, a reasonable juror could have concluded the accused molecule infringed. Finally, the court rejected defendants' damages arguments. https://compass.docketnavigator.com/api/documents/filing/ f192734a-b08f-a73b-ff0e-5b984da03757 (subscription required)
District Court Denies Motion for Attorneys' Fees and Willful Infringement
Bayer Healthcare LLC v. Baxalta Inc., Civil Action No. 16-cv-1122-RGA (D. Del. Aug. 26, 2019)
In this follow-on opinion, the district court denied plaintiff's motion for attorneys' fees; granted plaintiff's motion for supplemental damages and pre-and post-judgment interest, and denied plaintiffs motion regarding indirect and willful infringement. https://compass.docketnavigator.com/api/documents/ filing/0b73e9f0-173c-c873-1388-e9de0762894a (subscription required)
Claimed Antibodies Adequately Described, but Not Enabled
Amgen Inc. v. Sanofi, Civil Action No. 14-1317-RGA (D. Del. Aug. 28, 2019)
Following a remand trial in this brand-vs-brand litigation, the jury found three claims of Amgen's patents pertaining to PCSK9 antibodies not invalid. On a motion for JMOL, the court found that substantial evidence supported the jury verdict that the claims were not invalid for lack of written description under the "representative species" test. The record contained contradictory evidence on the appropriate comparison metric (amino acid sequence or 3-D structure). Even if amino acid sequence was the appropriate metric, substantial evidence supported a finding of structural and functional similarity.
Addressing enablement, the court rejected defendants' argument that it was "impossible" to make an antibody binding to only one or two specified residues and nothing more. Such an antibody would fall outside the scope of the claim because it would not actually bind PCSK9 or block binding to the LDL receptor. The court then analyzed the Wands factors, holding as a matter of law that a reasonable factfinder would find that practicing the claims' full scope (the scope was "vast," encompassing millions of compounds) would require undue experimentation. The person skilled in the art would essentially have to do the same amount of work as the inventors to identify antibodies within the scope of the claims. The court also conditionally denied defendant's motion for a new trial, addressing evidentiary arguments concerning post-priority date evidence and jury instructions. https://compass.docketnavigator.com/api/documents/filing/ b441a599-8cff-33c6-4794-aa665203c764 (subscription required)