Endo Pharmaceuticals Inc. v. Actavis LLC
Opinion of the Court
Wallach, Circuit Judge.
*1367Appellees Endo Pharmaceuticals Inc. ("Endo Pharmaceuticals") and Mallinckrodt LLC ("Mallinckrodt") (collectively, "Endo") sued Appellants Actavis LLC, Actavis South Atlantic LLC, and Teva Pharmaceuticals USA, Inc. (collectively, "Actavis") in the U.S. District Court for the District of Delaware ("District Court"), alleging that two Abbreviated New Drug Applications filed by Actavis infringed claims 1-6 ("the Asserted Claims") of Mallinckrodt's
Actavis appeals, challenging the invalidity determination. We have jurisdiction pursuant to
BACKGROUND
I. The '779 Patent
Entitled "Process for Preparing Morphinan-6-One Products with Low Levels of a,ß-Unsaturated Ketone Compounds," the '779 patent generally relates to compounds known as "morphinan alkaloids," such as "oxymorphone," which have "great medical importance" and "are used extensively for pain relief." '779 patent col. 1 ll. 24-30. "Morphinan compounds and analogs thereof typically have a ring structure ... corresponding to Formula (1)":
*1368Id . col. 1 ll. 38-53. "[P]harmaceutically desirable morphinan compounds" often "have a ketone group[
In describing the prior art, the '779 patent explains that "[v]arious processes for producing morphinan-6-one compounds are known," and "many ... involve some form of catalytic hydrogenation[
The '779 patent discloses "processes for preparing highly pure morphinan-6-one products" having a relatively low concentration of ABUKs present as impurities, which "involve treating a reaction mixture including a morphinan-6-one compound and an [ABUK] with a sulfur-containing compound." Id . col. 5 ll. 6-10. These processes can "effectively reduce[ ] the concentration of undesirable [ABUKs] to acceptable levels,"
The Asserted Claims recite:
1. A hydrochloride salt of oxymorphone comprising less than 0.001% of 14-hydroxymorphinone .[3 ]
2. The hydrochloride salt of claim 1 comprising less than 0.0005% of 14-hydroxymorphinone .
3. A pharmaceutical acceptable form comprising the oxymorphone hydrochloride according to claim 1.
4. A hydrochloride salt of a morphinan-6-one compound corresponding to Formula (2):
*1369comprising less than 0.001% measured by [high performance liquid chromatography ] of an [ABUK] corresponding to Formula (3):
wherein the morphinan-6-one compound is oxymorphone and wherein X is -N(R17)-;
R1 and R2 are hydrogen;
R3 is hydroxy;
R10 is hydrogen;
R14 is hydroxy; and
R17 is methyl.
5. The hydrochloride salt of claim 4 comprising less than 0.0005% of 14-hydroxymorphinone .
6. A pharmaceutical formulation comprising the oxymorphone hydrochloride according to claim 4.
Id . col. 37 l. 58-col. 38 l. 61 (emphases added).
II. Prior Art References
The District Court determined three references constitute the prior art in this case. See Endo ,
A. Weiss
A scientific article from 1957, see Ulrich Weiss, Derivatives of Morphine. II. Demethylation of 14-Hydroxycodeinone. 14-hydroxymorphinone and 8,14-Dihydroxydihydromorphinone , 22 J. Organic Chemistry 1505, 1505-08 (1957) ("Weiss") (J.A. 2295-98), discloses, inter alia, the use of catalytic hydrogenation to convert oxymorphone ABUK to oxymorphone. See J.A. 2297 (employing palladium charcoal "as catalyst" and teaching arriving at the result of 14-hydroxydihydromorphinone, i.e., oxymorphone). Weiss also recounts 8,14-dihydroxy-7,8-dihydromorphinone *1370("oxymorphone diol") as "the product of hydration of the double bond of [oxymorphone ABUK]," J.A. 2295, the "ready conversion of [oxymorphone ABUK] into [oxymorphone diol]," J.A. 2296, and the reversion of oxymorphone diol to oxymorphone ABUK through the application of hydrochloride, see J.A. 2295, 2297.
B. Chapman
Entitled "Process for Preparing Oxycodone Hydrochloride Having Less Than 25 [Parts Per Million ('ppm') ] 14-hydroxycodeinone," U.S. Patent Application No. 2005/0222188 ("Chapman") (J.A. 2464-90) discloses, inter alia, processes that employ catalytic hydrogenation to purify oxycodone ABUK into the salt form of oxycodone. See J.A. 2473 ("In certain embodiments of the present invention, the 14-hydroxycodeinone [i.e., oxycodone ABUK] is converted to oxycodone by hydrogenation ... in conjunction with a ... catalyst...."). Chapman recites processes that convert oxycodone ABUK to 8,14-dihydroxy-7,8-dihydrocodeinone ("oxycodone diol"), a precursor to oxycodone ABUK, which can revert to oxycodone ABUK through the compound's conversion to salt form and thereby frustrate purification. See J.A. 2473-74. But Chapman provides a reaction that can remove oxycodone diol from a sample prior to the completion of purification, and prevent oxycodone diol's reversion to oxycodone ABUK. See J.A. 2483-84 (Example 3).
C. Rapoport
A scientific article from 1967, see Henry Rapoport et al., The Synthesis of Thebaine and Northebaine from Codeinone Dimethyl Ketal , 89 J. Am. Chemical Soc'y 1942, 1942-47 (1967) ("Rapoport") (J.A. 2908-13), discloses, inter alia, a process involving the use of bisulfite addition to convert oxycodone ABUK to oxycodone, see J.A. 2908-09. This process takes advantage of differences in solubility of the products of reactions between bisulfites and oxycodone ABUK to separate oxycodone from oxycodone ABUK. See J.A. 2908-09.
DISCUSSION
Actavis contends that the District Court erred by, inter alia, (1) misconstruing the claim term 14-hydroxymorphinone, see Appellants' Br. 67-74; and (2) determining that the Asserted Claims were not obvious in light of the prior art, see id . at 36-66. We address each argument in turn.
I. Claim Construction
A. Standard of Review and Legal Standard
"The proper construction of a patent's claims is an issue of Federal Circuit law...." Powell v. Home Depot U.S.A., Inc. ,
While courts may consider extrinsic evidence in claim construction, "such evidence is generally of less significance than the intrinsic record." Wi-LAN, Inc. v. Apple Inc. ,
B. The District Court Properly Construed 14-Hydroxymorphinone as 14-Hydroxymorphinone Hydrochloride
The District Court, relying on intrinsic and extrinsic evidence, determined that a PHOSITA would understand the 14-hydroxymorphinone limitations stated in claims 1-2 and 5 to mean "14-hydroxymorphinone hydrochloride," i.e., the "salt form" of 14-hydroxymorphinone. Endo ,
The District Court correctly construed 14-hydroxymorphinone as 14-hydroxymorphinone hydrochloride. We begin with the claims. See Phillips ,
Next, we turn to the broader specification. See Trs. of Columbia Univ. v. Symantec Corp. ,
*1372Relevant here, 14-hydroxymorphinone is mentioned in Example 3. See '779 patent col. 37 l. 36. Example 3 recites that "an oxymorphone [hydrochloride] sample was treated with a sulfur-containing compound,"id. at col. 37 ll. 18-19, the sample having contained a certain amount of "14-hydroxymorphinone ... impurity," id . col. 37 ll. 24-25. Following treatment, "oxymorphone base " was filtered out,
Finally, we look to extrinsic evidence. See Phillips ,
II. Obviousness
A. Standard of Review and Legal Standard
"Obviousness is a question of law, reviewed de novo, based upon underlying factual questions which are reviewed for clear error following a bench trial." Pozen Inc. v. Par Pharm., Inc .,
B. The District Court Did Not Clearly Err in Finding a PHOSITA Would Not Have a Reasonable Expectation of Success in Combining the Prior Art
The District Court held that a PHOSITA "would have understood that it would not be feasible" to employ Chapman's solution to the reappearing ABUK problem to Weiss's catalytic hydrogenation process for oxymorphone. Endo ,
The District Court did not clearly err in concluding that a PHOSITA would lack a reasonable expectation of success in combining Weiss, Chapman, and Rapoport. First, a PHOSITA would not have a reasonable expectation of success in employing Weiss's catalytic hydrogenation process for oxymorphone with Chapman's process to remove diol during hydrogenation. Although Weiss discloses a method of purifying oxymorphone ABUK through catalytic hydrogenation, it does not provide key reaction conditions, see J.A. 2295-98; see also J.A. 3456 (stating, by Endo's expert, that Weiss "omits[, inter alia,] ... the time that the hydrogenation reaction is run[,] ... the amount and composition of the ... catalyst[,] ... precisely what catalyst [is] us[ed,] ... [and] the pressure of the hydrogen gas," each of which can "affect the effectiveness of the hydrogenation procedure"),
In turn, Chapman discloses processes involving the catalytic hydrogenation of oxycodone ABUK, see J.A. 2473, and that these processes create oxycodone diol, see J.A. 2470, which can hinder purification by "revert[ing] to some ABUK and build[ing] up ABUK after an attempted purification," J.A. 3021. Chapman also describes a process that can reduce oxycodone diol in an oxycodone sample, see J.A. 2473-74, but Endo's expert explained that this would likely be ineffective in achieving the same purity as the oxymorphone claimed by the Asserted Claims, see J.A. 3483-91. This is because the only example of this process provided by Chapman, see J.A. 2383-84, discloses a "long reaction time" of "nearly 22 hours" only reducing the oxyocodone diol content of an oxycodone sample from 2,900 ppm to 400 ppm, and "with 400 ppm [of diol], that's a lot of ABUK you can make," J.A. 3483. Moreover, the longer the reaction runs, the less diol is progressively removed and the more "other side reactions are going to come in and compete," such that one would "start to hydrogenate other parts of the molecule and introduce other material" and, therefore, would not "have any [of the desired] product ... left at all." J.A. 3486-87; see '779 patent col. 2 ll. 46-51 ("[K]nown hydrogenation methods may tend to undesirably reduce the ketone as well as reducing or removing the [ABUK]," and "are not normally capable of efficiently and economically reducing the levels of [diol] to below 10 to 100 [ppm], or less.").
A PHOSITA would not have had a reasonable expectation of success in combining Weiss and Chapman because Weiss disclosed a material difficulty with using catalytic hydrogenation to purify oxymorphone to the FDA-mandated level, i.e., the production of relatively large amounts of oxymorphone diol, see J.A. 2295-96; see also J.A. 3479 (explaining, by Endo's expert, that a PHOSITA would have understood Weiss to teach "that they're going to have a higher concentration of the diol in the oxymorphone ABUK reactions than they will in the oxycodone and therefore there's a higher chance that they'll regenerate the oxymorphone ABUK after the end of the reaction than they would have in the oxycodone case"), and Chapman did not describe a viable solution to this difficulty, see J.A. 3483 (explaining, by Endo's expert, that a PHOSITA reading Chapman would not know how to achieve a sufficiently low amount of diol), 3486-87 (discussing, by Endo's expert, the problem of hydrogenating too much of the molecule); see also J.A. 2473-74. Moreover, Endo's expert testified that, because oxymorphone ABUK and oxycodone ABUK "are different molecules, ... they are going to have different reactivities," J.A. 3466; see J.A. 3220 (stating, by an inventor of another patent, that molecules like oxymorphone and oxymorphone ABUK can slow hydrogenation and are much less stable than oxycodone and oxycodone ABUK), and, therefore, a PHOSITA would have been unlikely to apply Chapman to oxymorphone ABUK, see J.A. 3445-46; see also J.A. 3455 (stating, by Endo's expert, that the position that a PHOSITA would have utilized oxycodone ABUK purification methods on oxymorphone ABUK "ignores differences between the reactivities of oxycodone and oxymorphone [,] ... [and] trivializes *1376the removal of the oxymorphone diol" and how "ABUK levels are expected to increase after hydrogenation ends").
Second, the District Court did not clearly err in finding that a PHOSITA lacked a reasonable expectation of success in employing Rapoport's sulfur addition and separation process to remove oxymorphone impurities. Rapoport discloses a process for purifying oxycodone ABUK through the use of bisulfite additions, but it does not state that any resulting compounds have the purity levels of those in the Asserted Claims. See J.A. 2908-13. According to Endo's expert, Rapoport explains that 25% of ABUK impurities remain following completion of the process, which is "not a very good partition ratio." J.A. 3516. In addition, he recounted that the process described by Rapoport not only fails to remove a significant amount of ABUK, but "result[s] in a large loss of the desired compound" as well. J.A. 3517. Therefore, he explained that a PHOSITA would not believe that Rapoport "would ever be able to get to ... 10 [ppm]," as claimed in the '779 patent. J.A. 3517; see J.A. 2911.
Third, based on the teachings of Weiss, Chapman, and Rapoport, the District Court did not clearly err in finding the FDA communications would not provide a PHOSITA with a reasonable expectation of success of achieving the claimed purity levels for oxymorphone. Relevant here, the FDA communications recount the FDA's "processes for addressing the problem of impurities" in oxymorphone that had been determined to be mutagenic. J.A. 2893. The FDA limited ABUK content in oxymorphone to 0.001%, i.e., 10 ppm, to satisfy FDA approval guidelines. See J.A. 2895; see also J.A. 2904 (providing that, in January 2004, "[the FDA] inform[ed] Mallinckrodt that a 0.001% limit [for ABUK] will be required for ... oxymorphone"). The FDA communications introduced a market force incentivizing purification of oxymorphone to the level of the oxymorphone claimed by the Asserted Claims. See J.A. 2895; Plantronics, Inc. v. Aliph, Inc. ,
This conclusion is further supported by the fact that the inventors of the '779 patent engaged in extensive experimentation, involving much failure, to ultimately produce the oxymorphone of the Asserted Claims. See, e.g. , J.A. 3142 (stating, by an inventor of the '779 patent, that the inventors "tried many different" ways to achieve the oxymorphone of the purity claimed, "but none of [the prior art] tell[s] you which ones will get you below the FDA-mandated level"), 3249-64 (describing, by a different inventor of the '779 patent, a subset of the experiments engaged in to reach the purity of the claimed oxymorphone), 3464 (acknowledging, by Endo's expert, the "extensive experimentation" engaged in by the inventors of the '779 patent to achieve the compounds claimed by the Asserted Claims). The inventors also testified to their concerns when they became aware of the FDA's purity requirement because it represented a dramatic, and potentially problematic, change in light of then-current knowledge and capabilities. See, e.g. , J.A. 3248 (expressing, by an inventor of the '779 patent, that he "was fairly shocked and concerned" because "[10 ppm was] a fairly low number," and "[i]t represent[ed] a fundamentally significant paradigm shift from the way the current [active pharmaceutical ingredient] manufacturing companies monitor and control their impurities"); see also J.A. 3386 (stating, by the project manager for Mallinckrodt's project to lower ABUK content in opioids, that "[g]iven that the target level that we were asked to reach for the ABUK[ ] impurities was orders of magnitude lower than where we currently stood, there were a number of challenges on both the process chemistry side as well as the analytical chemistry side"). Thus, the District Court did not clearly err in finding no reasonable expectation of success.
Actavis argues, and the dissent accepts, that the District Court erred as a matter of law by imposing a heightened standard in its application of the reasonable expectation of success test. See Appellants' Br. 56-57; Dissent Op. 1379-80. We disagree. Although Actavis points to the District Court's usage of the phrase "definitive solution," Appellants' Br. 56-57 (quoting Endo ,
CONCLUSION
We have considered Actavis's remaining arguments and find them unpersuasive. Accordingly, the Final Judgment of the U.S. District Court for the District of Delaware is
AFFIRMED
A ketone comprises "a carbonyl group"- an oxygen atom double-bonded to a carbon atom-where the carbon atom of the carbonyl group is single-bonded to two carbon atoms. J.A. 2952 (testimony of Actavis's expert).
Generally, catalytic hydrogenation is a process by which hydrogen, along with a catalyst, is added to a compound containing double bonds, i.e., an unsaturated compound, to convert it to a compound containing single bonds, i.e., a saturated compound. See J.A. 2993-94 (testimony of Actavis's expert). A "catalyst activates the hydrogen," and "[t]he hydrogen adds a double bond and takes a molecule that has a double bond and one hydrogen on each carbon to a single bond with two hydrogens on each carbon." J.A. 2993.
Relevant to this appeal, 14-hydroxymorphinone, also referred to as "oxymorphone ABUK," is an ABUK impurity in oxymorphone and "is considered a precursor to oxymorphone because it can be made into oxymorphone by adding a hydrogen, resulting in a single bond." Endo ,
"A specification includes both the written description and the claims of the patent." Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co. ,
"The prosecution history ... consists of the complete record of the proceedings before the [U.S. Patent and Trademark Office]...." Phillips ,
Although we may also consider the prosecution history, see Home Diagnostics ,
Actavis's argument that the Asserted Claims are anticipated by the prior art is dependent on our adopting their proffered construction of 14-hydroxymorphinone. See Appellants' Br. 66-67, 74-75. Since we do not adopt Actavis's construction, we need not address their anticipation argument. See Knowles Elecs. LLC v. Iancu ,
Congress amended § 103 when it enacted the Leahy-Smith America Invents Act ("AIA"). Pub. L. No. 112-29, § 3(c),
The FDA communications mandated that opioid manufacturers reduce ABUK impurities in oxycodone and oxymorphone to below 0.001%. J.A. 2895; see J.A. 2904. Although the District Court concluded that the FDA communications are not prior art, see Endo ,
With regard to each prior art reference, the District Court, citing cognizable evidence, see, e.g. , J.A. 3456 (testimony of Endo's expert regarding Weiss), 3483 (same regarding Chapman), 3516 (same regarding Rapoport), found Endo's expert "credible and more convincing" than Actavis's, see Endo ,
Indeed, the District Court considered the FDA communications' import in its motivation to combine or modify analysis. See Endo ,
The dissent raises the concern that, after the FDA imposed a purity requirement for oxymorphone, Endo improperly "claimed the FDA mandate[d]" purity levels, rather than "a specific process." Dissent Op. 1381; see
The dissent selectively chooses other statements made by the District Court. See Dissent Op. 1379-80. Regardless, for the reasons explained, we are confident the District Court applied the correct standard. Indeed, we agree that, if the District Court had applied a 'definitive solution' or 'actual success' standard to measure reasonable expectation of success, it would be legal error.
Actavis also argues that the District Court erred in its finding of non-obviousness because a secondary consideration, i.e., simultaneous invention, supports obviousness. See Appellants' Br. 56. Actavis argues three patent applications and one patent close in time to the '779 patent's invention date, all of which disclose compounds of a purity comparable to those claimed by the Asserted Claims, support obviousness. See
Dissenting Opinion
I respectfully dissent. The FDA set a regulatory requirement that ABUK content in oxymorphone products be less than 0.001% (10 ppm). Mallinckrodt then claimed this requirement in the '779 patent. Not only does the FDA's mandate disclose every limitation of claim 1, but it is the only prior art reference that discloses the 0.001% oxymorphone ABUK limitation. Compare J.A. 2736, 2895, with '779 patent col. 37 ll. 58-59. Yet, the district court determined that this mandate did not disclose "anything substantive *1379relevant to obviousness." Endo Pharm. Inc. v. Actavis Inc. , No. CV-14-1381,
The district court found that the FDA Communications do not disclose how to achieve low-ABUK oxymorphone, "nor do they disclose that this result had ever been achieved in the past.... There is simply no disclosure of anything substantive relevant to obviousness in these communications." Id. at *7. The district court further found that "[s]ince the FDA mandate was nothing more than a directive and provided no substantive teachings on how to produce low-ABUK oxymorphone, it cannot serve as a 'motivation to combine' in an obviousness analysis." Id. at *12. I fail to see how the FDA Communications do not disclose "anything substantive relevant to obviousness," when they disclose every limitation of claim 1 and are the only references that expressly disclose the limitation of oxymorphone ABUK content less than 0.001%. Id. at *7. It can hardly be disputed that the FDA communications motivated the actual development of the '779 invention. Indeed, as one of the inventors of the '779 patent testified, "no special attention was focused on" ABUK impurities prior to the FDA's structural alert. J.A. 3138 at 222:19-21.
The district court also erred by elevating the reasonable expectation of success standard to require that the prior art provide a definitive solution to the problem and proof of actual success. For example, in addressing Rapoport, which discloses a sulfur addition reaction followed by extraction, the court required proof that Rapoport's technique was actually used and worked. Specifically, the district court found that a person of ordinary skill would not have thought Rapoport promising because of its poor extraction partition ratio combined with "the lack of any examples of this method being used successfully ." Decision ,
*1380The district court may have recited the correct legal standard, but contrary to what the majority states, the district court certainly did not apply that standard in its analysis. See Majority Op. 1377-78. For example, the district court's finding that a person of ordinary skill would not have found Rapoport "promising" was partially based on "the lack of any examples of [Rapoport] being used successfully." Decision ,
The district court similarly erred when considering Chapman. After reviewing testimony from both experts, the district court credited Mallinckrodt's expert, Dr. Davies, and stated that "even if a person of ordinary skill would view the oxycodone art as informative in researching possible solutions to reducing ABUK levels in oxymorphone, he would not find a definitive solution in Chapman ." Decision ,
Finally, the district court erred by conflating the requirements of reasonable expectation of success and motivation to combine. The district court required that the FDA Communications teach how to achieve the claimed invention in order to provide a motivation to combine. See Decision ,
Our case law does not require that a reference teach how to achieve the claimed invention in order to provide a motivation to combine. The FDA Communications disclose all the limitations of claim 1. They also disclose a reason to modify Weiss, Chapman, or Rapoport to achieve ABUK
*1381levels of less than 10 ppm: the FDA required such levels because it had determined that ABUK levels higher than 10 ppm were genotoxic. If these communications also taught "how the goal is attained," they would anticipate the asserted claims-we would have no need to address obviousness.
For all these reasons, I would vacate the district court's decision and remand to allow the district court to apply the correct obviousness test and properly consider the role of the FDA mandate-the sole reason for the '779 patent's existence-in the obviousness analysis. This is not a typical Hatch-Waxman case where the patentee provided the public with a new drug, formulation, or manufacturing process. While Mallinckrodt's patent specification is directed to a specific process for achieving the FDA's objective, Mallinckrodt did not claim that process. Mallinckrodt instead claimed the FDA mandate. The FDA sought to make oxymorphone safer for the public and Mallinckrodt took advantage by claiming the directive itself, securing exclusive rights to a drug first approved in 1959. This is not the type of innovation that the patent system and the obviousness standard were designed to protect.
Reference
- Full Case Name
- ENDO PHARMACEUTICALS INC., Mallinckrodt LLC, Plaintiffs-Appellees v. ACTAVIS LLC, Fka Actavis Inc., Actavis South Atlantic LLC, Teva Pharmaceuticals USA, Inc., Defendants-Appellants
- Cited By
- 16 cases
- Status
- Published