ANDREWS, U.S. DISTRICT JUDGE.
Plaintiff brought this patent infringement action on June 3, 2015, alleging that Defendant had infringed seven of Plaintiffs patents by filing Abbreviated New Drug Application ("ANDA") No. 208043 seeking to enter the market with a generic version of Plaintiffs Contrave product. (D. I. 1). On April 15, 2016, Plaintiff filed a First Amended Complaint alleging infringement of four patents. (D.I. 47). Prior to trial, Plaintiff withdrew one of the four patents (see D.I. 182), leaving three patents-in-suit: U.S. Patent Nos. 7,462,626 ("the '626 patent"), 7,375,111 ("the '111 patent"), and 8,916,195 ("the '195 patent"). The Court held a three day bench trial on June 5-7, 2017. (D.I. 178, 179, 180) ("Tr.").
Plaintiffs Contrave product is approved by the Food and Drug Administration ("FDA") for "chronic weight management in adults" who are obese or overweight and who have "at least one weight-related comorbidity," such as type 2 diabetes or hypertension. (D.I. 117-1 at 5, ¶ 4). Contrave is formulated as extended-release tablets with the active ingredients naltrexone hydrochloride and bupropion hydrochloride. (Id., ¶ 3).
Bupropion was first approved by the FDA in 1996 for use as an antidepressant and in 1997 for use in smoking cessation treatment. (Tr. 422:11-13). Bupropion was known to have weight loss effects as early as 1995. (Tr. 422:18-424:11). The efficacy and safety of bupropion for weight loss had been studied extensively prior to 2003, the priority date for the invention claimed in the patents-in-suit. (Tr. 425:10-431:23). Naltrexone is an opioid agonist that is FDA approved for treating drug addiction. (Tr. 432:112-433:10). At least as early as 2002, naltrexone was known to reduce carbohydrate cravings in patients with diabetes. (Tr. 433:21-434:19).
The '626 patent is directed to methods of treating overweight or obesity using a combination of naltrexone and bupropion. Plaintiff asserts that Defendant induces infringement of dependent claims 2, 15, 26, and 31 of the '626 patent. Claims 2 and 15 depend from independent claim 1, which reads:
('626 patent, claim 1). Dependent claim 2 adds the limitation that the naltrexone and bupropion "are administered together." Dependent claim 15 adds the limitation that the naltrexone and bupropion "are administered in a single oral dosage form."
Claim 26 depends from independent claim 25, which reads:
('626 patent, claim 25). Claim 26 adds the limitation that the naltrexone and bupropion "are administered together." Asserted claim 31 depends from claim 30, which is not asserted and which depends from claim 25. Claim 30 adds the limitation that the naltrexone and bupropion "are in a sustained-release formulation." Asserted claim 31 adds the limitation that the naltrexone and bupropion "are administered in a single oral dosage form."
The '111 patent is directed to compositions for use in weight loss treatments comprising a combination of sustained release formulations of bupropion and naltrexone. Plaintiff asserts that Defendant directly infringes claim 1 of the '111 patent. Claim 1 reads:
('111 patent, claim 1).
The '195 patent is directed to methods of treating overweight or obesity using a combination of naltrexone and bupropion. Plaintiff asserts that Defendant directly infringes claim 11 of the '195 patent. Claim 11 reads:
('195 patent, claim 11).
Defendant contends that it does not infringe any of the asserted claims. Defendant also argues that claim 11 of the '195 patent is invalid for lack of written description and all asserted claims of the '111 and '626 patents are invalid as obvious in view of the prior art.
Plaintiff moves to strike Defendant's exhibits DTX-48 and DTX-180, a fax sent by Dr. Kishore Gadde to Orexigen on November 19, 2003 ("Gadde Fax" or "Fax"), as inadmissible hearsay. (D.I. 155 at 2). The Fax consists of a table which contains brief descriptions of patients Dr. Gadde treated for obesity in 1997 and 2000. (DTX-180 at GADDE0000010). According to the table, Dr. Gadde treated four patients in 1997 with a combination of fluoxetine and naltrexone and two patients in 2000 with a combination of bupropion and naltrexone. (Id.). Dr. Gadde testified at trial that he prepared the table in 2003 "by reviewing the patient charts." (Tr. 715:16-18, 768:19-21). The original patient charts were not produced as evidence in this case. (D.I. 155 at 3).
Defendant argues that the Gadde Fax is not hearsay because it qualifies as an adoptive admission under Federal Rule of Evidence 801(d)(2)(B).
During trial I found the Gadde Fax to be admissible as an adoptive admission, but allowed the parties to present additional arguments about its admissibility in post-trial briefing. (Tr. 731:1-4). I found that, while "not an absolute certainty," it was "a fair inference" that the paragraph Defendant pointed to was referring to the chart in the Gadde Fax. (Tr. 730:11-14). I also stated that it seemed clear that the paragraph's reference to additional weight loss referred to patients 2 and 3 on the fax, which are patients who received the fluoxetine/naltrexone
My opinion that the Gadde Fax is admissible as an adoptive admission has not changed. I think there is sufficient detail in the FDA report to support the inference that the "personal communication" referred to was the Fax. I disagree with Plaintiffs contention that this paragraph was merely a reference to the Fax and a repetition of the hearsay contained in the Fax. (D.I. 155 at 5-6). Orexigen presented this information to the FDA in support of its IND Application. I find it difficult to believe Orexigen would have done so if it did not believe in the trustworthiness of the contents of the communication. As to Plaintiffs argument that Defendant must show that each statement in the Fax was separately adopted (D.I. 155 at 7), I think this is satisfied by the statement that "additional weight loss was observed in 2 of 6 patients." It seems to me that this refers to the six patients reported in the Fax and I think the only reasonable interpretation is that the Fax was adopted in its entirety.
This does not mean, however, that the Gadde Fax is admissible as substantive evidence of anything that Dr. Gadde did in 1997 or 2000. The parties agreed that any allegations of public use by Dr. Gadde in 2000 would be subject to the corroboration requirement for inventor testimony. (Tr. 950:17-23). Defendant stated at trial that the purpose of Dr. Gadde's testimony and the Gadde Fax was not to prove prior use, but to prove secondary considerations, such as motivation to combine. (Tr. 951:13-17). Defendant argued that motivation to combine was not subject to the corroboration requirement. (Tr. 954:17-955:5). As I discuss below, I disagree. The Gadde Fax is not admissible to show that Dr. Gadde treated patients with the combinations of drugs reported in the Fax in 1997 and 2000, or as evidence of anything that occurred prior to the date the Fax was prepared.
For the foregoing reasons, Plaintiffs Motion to Strike (D.I. 155) is denied. The Gadde Fax is admissible for the limited purpose of showing that Dr. Gadde shared the data reported in the Fax with Orexigen in 2003.
The written description requirement contained in 35 U.S.C. § 112, ¶ 1 requires that the specification "clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (alteration in original). "In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. "A party must prove invalidity for lack of written description by clear and convincing evidence." Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015).
Defendant argues that claim 11 of the '195 patent is invalid for lack of written description because the ranges given for the claimed dissolution profile "were improperly cobbled together" and were measured using a different method than that required by the claim. (D.I. 162 at 10). Specifically, Defendant argues that the lower bounds of the dissolution ranges at one and two hours recited in the claim were not obtained using the USP Apparatus 2 Paddle Method required by the claim. (Id. at 10). Defendant further argues that there is no evidence in the specification as to which method was used to obtain the 99% dissolution profile stated in the claim for the eight hour range. (Id.). Finally, Defendant argues that the upper
Plaintiff responds that simply because the claims draw support from different parts of the specification does not mean that a person of ordinary skill would not believe that the inventor was in possession of the invention. (D.I. 164 at 30). Plaintiff also argues that there is no legal requirement that all claim limitations be set out in a single place in the specification. (Id. at 31). Plaintiff points to the prosecution history, which shows the applicant cited to specific portions of the specification as support for claim 11, resulting in a notice of allowance for this claim. (Id.).
Claim 11 of the '195 patent claims a method of treating overweight or obesity using a sustained released formulation of bupropion and naltrexone. Claim 11 includes the limitation that the naltrexone have a specific dissolution profile measured "in a dissolution test of USP Apparatus 2 Paddle Method at 100 rpm in a dissolution medium of water at 37°C." The dissolution profile recited requires "a) between 39% and 70% of naltrexone released in one hour; b) between 62% and 90% of naltrexone released in two hours; and c) at least 99% in 8 hours."
As support for the claimed dissolution profile, Plaintiff points to Table 10 in the specification. (Id. at 32). Table 10 provides dissolution data for naltrexone in one embodiment described in the specification. ('195 patent at 19:60-67). Table 10 indicates that, after one hour, 67% of naltrexone was released, after two hours, 85% of naltrexone was released, and after 8 hours, 99% of naltrexone was released. ('195 patent at 20:1-10). These values fall squarely within the ranges in claim 11. Defendant argues that this data is not relevant as it was not obtained using the USP Apparatus 2 method. (D.I. 162 at 11). In response, Plaintiff points to a portion of the specification that it argues constitutes a definition of a "standard dissolution test." (D.I. 164 at 32; '195 patent at 6:49:55).
I agree with Plaintiff that the specification would indicate to a person of ordinary skill that all of the dissolution data reported in the patent was obtained "using Apparatus 2 ... at a spindle rotation speed of 100 rpm and a dissolution medium of water, at 37° C., or other test conditions substantially equivalent thereto." ('195 patent at 6:52-55). Plaintiffs expert, Dr. Treacy, testified that a person of ordinary skill would recognize that the inventors had possession of an embodiment representative of the invention, as described in Table 10. (Tr. 660:21-661:1). Dr. Treacy further testified that a person of ordinary skill "would find reasonable support for the claim limitations in the written description," specifically the upper and lower limits for each of the ranges. (Tr. 660:12-20). Dr. Treacy also opined that, in the context of the patent, a person of ordinary skill would understand that the inventors had possession of the claimed invention regardless of whether the USP Apparatus 2 method or a "substantially equivalent" method were used. (Tr. 663:3-9).
Defendant's expert, Dr. Mayersohn, testified at trial that the paddle method and the USP Apparatus 1 basket method were different in that the hydrodynamics were different and that a person of ordinary skill would expect the two methods to yield different results. (Tr. 602:23-604:20). Dr. Mayersohn did not, however, perform any actual tests on the tablets claimed in this patent. (Tr. 640:19-22). Furthermore, in his expert report, Dr. Mayersohn provided an opinion on obviousness for this claim in which he relied on a prior art reference that used the USP Apparatus 1 basket method. (Tr. 637:8-640:13). It seems to me
I do not think it matters whether the two methods would yield exactly the same results. I find credible Dr. Treacy's testimony that a person of ordinary skill would understand, in the context of the patent, that the inventors possessed the claimed invention. The embodiments disclosed in a patent are intended to be exemplary and it is clear to me that the inventors possessed at least one embodiment that falls squarely within the claimed ranges, as evidenced by Table 10. Furthermore, Defendant's emphasis on the purported differences between the two methods of measuring dissolution profiles seems to me to be misplaced as even its own expert was willing to favorably compare the two methods when it was to Defendant's benefit to do so. Therefore, whether the dissolution data reported in the specification was obtained using the basket method or the paddle method is not relevant to whether the inventors had possession of the invention.
Defendant also argues that the lower bounds of the one and two hour ranges lack written description support because they were pulled from Table 5, which reports data on specific embodiments which includes different amounts of the polymer excipient hydroxypropylmethyl cellulose ("HPMC"). (D.I. 162 at 12). Defendant contends that the data from the 15% HPMC formulation was "randomly selected" and "improperly picked from amongst a plethora of other possible options." (Id. at 12-13). I disagree. As Plaintiff points out, claim 11 calls for a "sustained-release formulation." (D.I. 164 at 34). Both Dr. Mayersohn and Dr. Treacy testified that the data from the 5% and 10% HPMC formulations indicated that both were "essentially immediate release" and the 15% formulation was "the first one ... where you see a sustained release profile." (Tr. 615:6-19, 655:10-17). For this reason, it seems clear that these are appropriate data points to support the claimed lower bounds for the one and two hour ranges.
Dr. Mayersohn's main criticism of using the data in Table 5 was that there was no eight-hour value and, in his opinion, the data provided indicated that the dissolution profile would plateau and never reach the claimed 99% at eight hours. (Tr. 615:20-616:3). I am not convinced. There is no data provided at all in Table 5 for the dissolution at eight hours. I do not think there is sufficient evidence to support Dr. Mayersohn's plateau theory to a clear and convincing standard for invalidating this patent claim. In contrast, as Plaintiff notes, there is an embodiment reported in Table 10 that has a dissolution profile falling squarely within the claimed ranges. (D.I. 164 at 32).
Defendant also argues that the inventor did not possess the eight-hour limitation by attempting to characterize this limitation as a range, wherein "at least 99%" necessarily "extends up to and includes 100%." (D.I. 162 at 13). Defendant suggests that to show the inventor possessed the invention, Plaintiff must establish written description support "for the upper end of the claimed range above 99%." (Id. at 15). I disagree. Dr. Treacy opined that "at least 99%" would be understood by a person of ordinary skill to mean "essentially complete dissolution." (Tr. 653:5-12). I find this testimony credible. It seems clear to me that "at least 99%" means "at least 99%" rather than "between 99% and 100%." I think it is sufficient that the inventors showed possession by disclosing an embodiment that falls squarely within all of the claimed ranges, including "at least 99%" at eight hours.
Defendant suggests that all of the purported shortcomings it has identified in the disclosure of the claimed ranges necessarily lead to the conclusion that the patent fails to provide "blazemarks" that would direct a person of ordinary skill to select those specific bounds. (D.I. 162 at 15). The cases Defendant cites to support for this failure do not support its position. (Id. at 9). Most of Defendant's cases dealt with situations where an inventor had disclosed a large genus of possible compounds. Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996) ("simply describing a large genus of compounds is not sufficient to satisfy the written description requirement as to particular species or sub-genuses"); Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1367 (Fed. Cir. 2011) (finding lack of written description where patent claimed "rapamycin or a macrocyclic triene analog thereof" but specification "fail[ed] to disclose even a single member of either the genus of `analogs' of rapamycin, or the more specific genus of `macrocyclic triene analogs' of rapamycin"); In re Ruschig, 379 F.2d 990, 994 (C.C.P.A. 1967) (finding lack of written description where disclosure of genus encompassed "half million compounds within the scope of the broadest claim"). The instant case is not one of an inventor disclosing a large genus without any disclosure that certain of the species within the genus are preferred. I hold that Defendant has not proven by clear and convincing evidence that claim 11 of the '195 patent is invalid for lack of written description.
Defendant argues that claims 26 and 31 of the '626 patent and claim 1 of the '111 patent are invalid as obvious over the prior art.
A patent claim is invalid as obvious "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). The determination of obviousness is a question of law with underlying factual findings. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1359-60 (Fed. Cir. 2012). "The underlying factual inquiries include (1) the scope and content of the prior art; (2) the
A court is required to consider secondary considerations, or objective indicia of nonobviousness, before reaching an obviousness determination, as a "check against hindsight bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1078-79 (Fed. Cir. 2012). Relevant secondary considerations include commercial success, long felt but unsolved needs, failure of others, praise, unexpected results, and copying, among others. Graham, 383 U.S. at 17-18, 86 S.Ct. 684; Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000); Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). Secondary considerations of nonobviousness are important because they "serve as insurance against the insidious attraction of the siren hindsight...." W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983).
A patentee is not required to present evidence of secondary considerations. See Prometheus Labs., Inc. v. Roxane Labs., Inc., 805 F.3d 1092, 1101 (Fed. Cir. 2015). That said, if the patent challenger establishes a prima facie case of obviousness, "the patentee would be well advised to introduce evidence sufficient to rebut that of the challenger." Id. (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007)). There must be enough evidence, however, for a finding that a given secondary consideration exists by a preponderance of the evidence. See Apple, Inc. v. Samsung Elec. Co., Ltd., 839 F.3d 1034, 1053 (Fed. Cir. 2016) (en banc). If there is, then the probative value of each secondary consideration will be considered in light of the evidence produced. That does not mean, though, that the burden of persuasion on the ultimate question of obviousness transfers to the proponent of the secondary consideration. Pfizer, Inc., 480 F.3d at 1359. That burden stays always with the patent challenger. Id. at 1359-60.
A party asserting that a patent is invalid as obvious must "show by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). That "expectation of success need only be reasonable, not absolute." Id. at 1364. "Whether an ordinarily skilled artisan would have reasonably expected success .... is measured as of the date of the invention[]...." Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1362 (Fed. Cir. 2009).
The '111 and '626 patents both claim priority to U.S. Provisional Application No. 60/466,838 ("the '838 provisional application"), filed on April 29, 2003. ('111 patent, cover; '626 patent, cover). Defendant asserts in post-trial briefing that Plaintiff failed to prove that the '838 provisional application "provided an adequate, enabling written description sufficient to demonstrate that the asserted claims are entitled to the '838 provisional's filing date." (D.I. 162 at 16). Defendant appears to be suggesting that Plaintiff had an affirmative duty to come forward with evidence supporting its claim to priority. I disagree. While the burden of establishing entitlement to the priority date of a provisional application rests with the party claiming priority, see, e.g., PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008), Plaintiff need not have met that burden in this case.
As an initial matter, a defendant raising a defense of invalidity based on anticipating prior art "has the burden of going forward with evidence that there is such anticipating prior art." Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Once the defendant has met its burden, the plaintiff "has the burden of going forward with evidence either that the prior art does not actually anticipate, or ... that it is not prior art because the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art." Id.
Here, Defendant did not come forward with prior art that would cause Plaintiff to present evidence that it is entitled to claim the priority date of its provisional application. First, Defendant's arguments that the '111 and '626 patents are invalid are limited to obviousness and lack of written description. (See generally D.I. 153). Defendant does not argue the '111 and '626 patents are invalid as anticipated by any prior art reference. Second, after the pretrial conference, Defendant represented to the Court that it would rely on one specific combination of references to support its obviousness defense as to the '111 and '626 patents. (See D.I. 123). That combination consisted of Jain, a peer reviewed paper from 2002, and O'Malley, a patent that issued on April 1, 2003. Defendant identified no other prior art references to support its obviousness defense, and in particular, none between April 29, 2003 and April 21, 2004. Thus, there was no need for Plaintiff to present evidence that it was entitled to an earlier priority date in order to prevent a particular reference from being treated as prior art. Further, although Defendant referred to Gadde in its letter to the Court (id. at 2, 5), Defendant did not indicate that it would rely upon the Gadde Fax as prior art,
Defendant argues that Dr. Gadde's work in 2000 treating patients with the combination of naltrexone and bupropion for weight loss, as documented in the Gadde Fax, constitutes prior art. (D.I. 162 at 31). I disagree. The contents of the Gadde Fax, the purported treatment of six patients in 1997 and 2000, were not corroborated at trial. (Tr. 950:17-951:3). Defendant suggests that no corroboration was necessary "because Dr. Gadde is a nonparty inventor with no interest in this litigation." (D.I. 162 at 31 n.7). It is true that the Federal Circuit has held that "corroboration is required only when the testifying inventor is asserting a claim of derivation or priority of his or her invention and ... stands to directly and substantially gain by his or her invention being found to have priority over the patent claims at issue." Thomson, S.A. v. Quixote Corp., 166 F.3d 1172, 1176 (Fed. Cir. 1999). The problem for Defendant in this case, however, is that Dr. Gadde did not testify to any independent recollection of any of the facts of the treatments he administered in 1997 or 2000. Rather, Dr. Gadde testified directly from the 2003 Fax. Dr. Gadde's 1997 and 2000 treatments, therefore, are not themselves prior art. The Gadde Fax is not evidence of anything more than the fact that Dr. Gadde shared with Orexigen the contents of the Fax in 2003.
Jain is a peer reviewed paper published in 2002. (DTX-011). There is no dispute that Jain is prior art. Jain discloses a placebo-controlled study of sustained release bupropion for reducing weight and depressive symptoms in obese patients. (DTX-11, p.1049). Jain reports a placebo adjusted weight loss of 2.8%. (Id.; Tr. 852:23-24). Jain does not discuss naltrexone, nor does it suggest combining bupropion with naltrexone or any other drug. (Tr. 853:17-23). Jain further discloses that the mechanism of action of bupropion for weight loss was unknown. (DTX-11, p. 1055; Tr. 854:9-17).
O'Malley is a U.S. Patent that issued on April 1, 2003. (DTX-18, cover). O'Malley issued from an application filed on September 16, 1999. (Id.). There is no dispute that O'Malley is prior art. O'Malley discloses the use of an opioid antagonist, such as naltrexone, during smoking cessation to minimize weight gain. (Id. at 1:14-21). O'Malley also discloses that the opioid antagonist may be administered "in combination with at least one withdrawal attenuating agent ... such as clonidine, acamprosate, antihypertensives, antidepressants, antianxiety agents, agents which alter serotonergic function or other agents." (Id. at 4:25:33). One of the antidepressants disclosed in O'Malley is bupropion. (Id., claims 1, 4, and 19).
Defendant argues that it would have been obvious to a person of ordinary skill in the art to combine bupropion and naltrexone for treating overweight and
Plaintiff responds by arguing that Defendant's obviousness analysis suffers from impermissible hindsight bias. (D.I. 164 at 15). Plaintiff argues that "there were dozens of different biological targets for weight loss with a wide range of pharmacological agents that could be considered for each of those targets." (Id.). Plaintiff contends that Defendant "starts with bupropion because the ultimate invention had bupropion," and argues that assuming a person of ordinary skill "would necessarily focus on improving bupropion" constitutes improper hindsight bias. (Id.).
Defendant's expert, Dr. Ahima, opined that Jain disclosed that sustained release bupropion was effective and well-tolerated. (Tr. 430:22-431:2). Plaintiffs expert, Dr. Seeley, disagreed, pointing to the "relatively modest" placebo-adjusted weight loss of 2.8%. (Tr. 852:22-24). This modest weight loss was insufficient to meet FDA requirements of five percent placebo adjusted weight loss. (Tr. 851:5-11). Dr. Seeley also testified that bupropion was "known to have seizure risks." (Tr. 853:3-16). Defendant cites to additional prior art disclosing that bupropion was effective for weight loss, including papers by Anderson and Gadde. (D.I. 162 at 23; Tr. 425:16-426:21, 428:3-17; DTX-9; DTX-10). Dr. Seeley responded by pointing to a statement in the Gadde reference that the "seizure risks complicates [bupropion's] use in obesity." (Tr. 877:7-8; DTX-9, p.550). The Gadde paper concludes that, "Alternative norepinephrine and dopamine uptake inhibitor drugs should be investigated as adjunctive therapies in weight management." (Tr. 877:8-11; DTX-9, p. 550). Dr. Seeley opined that a person of ordinary skill would understand the Gadde reference as "teach[ing] away from using bupropion as a weight loss therapy." (Tr. 877:14-17).
Dr. Seeley also testified to the many different biological targets for treating obesity. (Tr. 849:17-850:23; PTX-112). Dr. Seeley opined that each of these biological targets would involve different pharmacological agents. (Tr. 850:17-23). According to Dr. Seeley, the limited effectiveness of bupropion, combined with the fact that the mechanism of action of bupropion was unknown, would discourage a person of ordinary skill from considering bupropion as a starting point in developing a new weight loss drug. (Tr. 854:6-22).
I agree with Plaintiff that Defendant's suggestion that bupropion would be an obvious choice for further study in the treatment of overweight and obesity suffers from impermissible hindsight bias. It seems clear that the weight loss effects of bupropion were known to be relatively modest at best. There is also no dispute that the prior art references reported potential risks associated with bupropion, including the risk of seizure. Based on the lack of knowledge of the mechanism of action, combined with the modest effectiveness, I do not think a person of ordinary skill would have found bupropion to be an obvious starting point for further study.
Defendant next argues that it would have been obvious to combine bupropion with naltrexone to enhance bupropion's weight loss effects. (D.I. 162 at 18). According to Defendant, naltrexone was known to cause weight loss and the combination of bupropion and naltrexone had already been used for weight loss. (Id. at 17-18). Plaintiff responds that the literature does not disclose that naltrexone alone was effective for weight loss. (D.I. 164 at 18). Plaintiff further argues that the
Defendant relies on the Atkinson and Bernstein references as support for its argument that naltrexone was known to cause weight loss. (D.I. 162 at 17; Tr. 440:4-21, 438:12-20). Dr. Ahima testified that Atkinson disclosed "a small but significant weight loss in women, not the men" in a study of sixty obese patients given naltrexone for eight weeks. (Tr. 440:15-19; DTX-97, p.419). Dr. Ahima further testified that Bernstein disclosed "significant reductions in carbohydrate cravings" in patients treated with naltrexone. (Tr. 438:12-20; DTX-13 at ¶ 15).
Plaintiffs expert, Dr. Seeley, pointed out that Bernstein does not disclose weight loss, only curbing carbohydrate cravings. (Tr. 878:13-21). Dr. Seeley further testified that Atkinson disclosed a body weight increase in men taking naltrexone. (Tr. 881:1-18). According to Dr. Seeley, a person of ordinary skill reading Defendant's prior art references would conclude that "naltrexone is not a very effective weight loss agent by itself." (Tr. 882:3-9). Dr. Seeley further opined that the references "teach away from the use of naltrexone." (Tr. 882:10-12).
I agree with Plaintiff that the prior art cited by Defendant does not teach a person of ordinary skill that naltrexone was effective for weight loss. The Bernstein reference in particular was not directed to weight loss and did not disclose weight loss effects of naltrexone. I do not think a disclosure of effectiveness for curbing carbohydrate cravings, without more, would inform a person of ordinary skill that naltrexone was effective for weight loss in overweight or obese individuals. Furthermore, Atkinson's disclosure of a small weight loss in women is counterbalanced by its disclosure of an increase in body weight in men. I do not think either of these references, individually or in combination, teaches a person of ordinary skill that naltrexone is effective for weight loss.
Finally, Defendant argues that the prior art disclosed the use of the combination of bupropion and naltrexone for weight loss. (D.I. 162 at 18). Defendant cites to the Dante and O'Malley patents as support for this contention. (Id.; DTX-16; DTX-18). Dr. Ahima testified that Dante discloses the use of the combination "decreases cravings for sugar and carbohydrates." (Tr. 445:10-18). Dr. Ahima further testified that the combination of bupropion and naltrexone was disclosed in O'Malley as effective for reducing weight gain during smoking cessation treatment. (Tr. 448:22-449:17).
Plaintiff responds by pointing out that neither of these references disclose the use of the combination of bupropion and naltrexone for weight loss. (D.I. 164 at 19). Dr. Seeley testified that Dante disclosed compositions and methods of treatment for depression, not weight loss. (Tr. 869:21-870:3; DTX-16). According to Dr. Seeley, Dante does not disclose weight loss using a combination of bupropion and naltrexone, Dante does not disclose naltrexone enhancing bupropion's weight loss effectiveness, and the only discussion related to weight management in Dante is of weight gain associated with tricyclic antidepressants, a different category of antidepressants than bupropion. (Tr. 870:7-23).
Dr. Seeley further testified that O'Malley is directed to smoking cessation treatments, not weight loss. (Tr. 856:14-857:5). Dr. Seeley explained that O'Malley does not contain a single disclosure of weight loss. (Tr. 857:3-5). Rather, O'Malley discloses a single example of minimizing weight gain during smoking cessation therapy and that the single example did not use the combination of naltrexone and bupropion.
I find Dr. Seeley's testimony and explanations credible. I do not think that Dante and O'Malley teach a person of ordinary skill that the combination of naltrexone and bupropion is effective for weight loss. Neither of these references teach a person of ordinary skill anything about weight loss and neither of them indicate that naltrexone enhances bupropion's effectiveness for weight loss. Defendant's argument, it seems to me, is a classic case of hindsight bias. Defendant begins with the combination Plaintiff ultimately patented and then seeks to justify that combination by combining prior art references that simply would not guide a person of ordinary skill to choose this combination.
Defendant argues that a person of ordinary skill would have been motivated to combine the teachings of Jain and O'Malley to arrive at the combination of bupropion and naltrexone for weight loss. (D.I. 162 at 28). Defendant's rationale is based on a person of ordinary skill reaching the conclusion that naltrexone was effective for weight loss and that the combination had been previously used in connection with weight loss. (Id.). I have already determined that neither of these conclusions are supported by Defendant's prior art references. It seems clear that the prior art disclosed that naltrexone was not effective for weight loss, at least because it caused weight gain in the men involved in the study. Furthermore, Defendant's prior art does not disclose the use of the combination for weight loss, nor does it disclose any enhancement of bupropion's effectiveness for weight loss. I fail to see how the combination of Jain and O'Malley, in the absence of impermissible hindsight bias, would motivate a person of ordinary skill to pursue the combination of bupropion and naltrexone for weight loss.
As I have determined that the Gadde Fax is not prior art and cannot serve as evidence of prior use by Dr. Gadde, I need not consider whether the disclosure of his alleged treatment of two patients in 2000 with the combination of bupropion and naltrexone with "questionable benefit" and "no additional benefit" would have served as motivation to combine or would have provided a reasonable expectation of success.
"[S]econdary considerations, when present, must be considered in determining obviousness." Ruiz, 234 F.3d at 667; see also Cyclobenzaprine, 676 F.3d at 1076 ("[E]vidence on these secondary considerations is to be taken into account always, not just when the decisionmaker remains in doubt after reviewing the art." (quoting Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985))).
Plaintiff presented evidence of unexpected results and failure of others. (D.I. 164 at 27). Plaintiff argues that the synergistic effect of the combination treatment was unexpected based on what was known from the prior art about using the two drugs individually for weight loss. (Id.). Defendant criticizes the single study Plaintiff
Plaintiff argues that there had been "numerous failures in the field of safe and effective obesity medications." (D.I. 164 at 27). Plaintiff presented evidence that "by the time of invention ... there were only two FDA drugs approved for the long-term treatment of obesity" and "at least seven other drugs that were being developed for the treatment of obesity had failed." (Id. at 28). Defendant counters that, rather than showing failure of others, the record shows evidence of success of others. (D.I. 162 at 34). Defendant again cites to the work of O'Malley, Dante, and Dr. Gadde as support for its contention that others had been successful in using the combination of naltrexone and bupropion for weight loss. (Id.). As I stated above, I disagree that there was any disclosure in O'Malley or Dante showing the use of the combination for weight loss and I am dubious about the claim that Dr. Gadde's results in treating two patients showed success. Defendant also argues that "there were and are a number of FDA-approved weight loss drugs" that are more effective and that carry a lower risk of side effects than the bupropion-naltrexone combination. (Id.). Defendant's claim that there were "a number of" other weight loss drugs is belied by the fact that it can only name two other approved weight loss drugs. (Id.). I do not think these two other drugs rebut Plaintiff's showing that many others had tried and failed to obtain FDA approval for weight loss drugs.
For the reasons given above, I find that Defendant has not met its burden of proving by clear and convincing evidence that claims 26 and 31 of the '626 patent and claim 1 of the '111 patent are obvious.
Plaintiff asserts that Defendant directly infringes claim 1 of the '111 patent and indirectly infringes claim 11 of the '195 patent and claims 2, 15, 26, and 31 of the '626 patent. During discovery, Defendant never alleged that its proposed ANDA product did not meet the following claim limitations: 1) "bupropion ... effective to induce weight loss" in the '626 and '111 patents; 2) "naltrexone ... effective to enhance the weight loss effect of the bupropion" in the '626 and '111 patents; and 3) "sustained release" in the '111 and '195 patents. (D.I. 129 at 4). In the pre-trial order, Defendant attempted to raise new non-infringement defenses, including by alleging failure of proof of these three limitations. (Id. at 3). In an order dated May 19, 2017, I held that Defendant
A patent is infringed when a person "without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... during the term of the patent...." 35 U.S.C. § 271(a). A two-step analysis is employed in making an infringement determination. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). First, the court must construe the asserted claims to ascertain their meaning and scope. See id. The trier of fact must then compare the properly construed claims with the accused infringing product. See id. This second step is a question of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). "Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device." Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). The patent owner has the burden of proving infringement by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).
35 U.S.C. § 271(b) provides that "[w]hoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b). "In order to prevail on an inducement claim, the patentee must establish first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement." ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1312 (Fed. Cir. 2007) (internal quotation marks omitted). In other words, "inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc). "[S]pecific intent may be inferred from circumstantial evidence where a defendant has both knowledge of the patent and specific intent to cause the acts constituting infringement." Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1342 (Fed. Cir. 2008). "[L]iability for induced infringement can only attach if the defendant knew of the patent and knew as well that `the induced acts constitute patent infringement.'" Commil USA, LLC v. Cisco Sys., Inc., ___ U.S. ___, 135 S.Ct. 1920, 1926, 191 L.Ed.2d 883 (2015) (quoting Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 131 S.Ct. 2060, 2068, 179 L.Ed.2d 1167 (2011)). The knowledge requirement may be satisfied by showing actual knowledge or willful blindness. See Global-Tech, 131 S.Ct. at 2068 (2011).
In Hatch-Waxman cases alleging that a proposed drug label will induce infringement by physicians, "The pertinent question is whether the proposed label instructs users to perform the patented method." AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1060 (Fed. Cir. 2010). "The label must encourage, recommend, or promote infringement." Takeda Pharm. U.S.A., Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 631 (Fed. Cir. 2015). "The mere existence of direct infringement by physicians, while necessary to find liability for induced infringement, is not sufficient for inducement." Id. Rather, "specific intent and action to induce infringement must be proven." Id. Even where a proposed label does not explicitly track the language of a claimed method, a package
Defendant contends that all of the asserted claims of the '626 patent require two steps, diagnosing and administering, that are each performed by a different actor, the doctor and the patient. (D.I. 172 at 8-10). According to Defendant, since the doctor diagnoses and the patient administers, there can be no infringement of these claims unless the patient is under the "control" of the doctor. (Id. at 11-14).
As an initial matter, I find that claims 26 and 31, which depend from claim 25, of the '626 patent involve the single step of administering the drug to a patient who has already been diagnosed. Defendant attempts to create an additional step in this method claim based on the fact that claim 25 requires that the drug is to be administered "to an individual who has been diagnosed as suffering from overweight or obesity." According to Defendant, "an obesity/overweight diagnosis is an explicit requirement of all of the '626 claims that will always be performed before the administering step." (D.I. 172 at 10) (emphasis omitted). I agree that a diagnosis is required, but I disagree that this comprises a step in the method claim. A plain reading of this claim limitation indicates that the individual will already be diagnosed prior to the method being performed. The method itself requires only the single step of administering the drug.
I also disagree with Defendant's assertion that Plaintiff "unequivocally admitted that the asserted claims of the '626 patent require a diagnosing step." (D.I. 172 at 10). Plaintiff made no such admission. Rather, Plaintiff stated only that some of the claims require "diagnosing" while other claims require "an individual who has been diagnosed." (D.I. 131, Ex. 17B at 1). This restatement of the precise language of the claims is not an admission of anything.
There is no dispute that claims 2 and 15, which both depend from claim 1, involve both a diagnosing step and an administering step. There is also no dispute that the diagnosing step is performed by the doctor, but the administering step, which I have construed as "delivering into the body" is performed by the patient, who takes the pills each day outside of the presence of the doctor. The parties dispute whether the patient's actions in self-administering the drug are attributable to the physician who performed the diagnosing step. I do not think it is necessary for me to decide this issue. Having found that all of the asserted claims of the '626 patent are not invalid and that claims 26 and 31 are infringed, I think the question of divided infringement presented by claims 2 and 15 is moot. I cannot conceive of any circumstances in which an additional finding of either infringement or non-infringement of claims 2 and 15 would have any impact on the outcome of this case. Therefore, I decline to decide whether the administering step in independent claim 1 is attributable to the physician.
Plaintiff asserts that Defendant directly infringes claim 1 of the '111 patent. Prior to trial, the only non-infringement argument raised by Defendant as to the '111 patent was that it could not be infringed because it was invalid. (D.I. 129 at 3). By
As discussed above, I hold that Defendant failed to prove by clear and convincing evidence that claim 1 of the '111 patent is invalid as obvious. Defendant has made no other non-infringement arguments. Since Plaintiff has shown by a preponderance of evidence that Defendant's ANDA product meets all limitation of this claim, I hold that Defendant infringes claim 1 of the '111 patent.
Plaintiff asserts that Defendant indirectly infringes claim 11 of the '195 patent. Prior to trial, the non-infringement arguments raised by Defendant as to the '195 patent were limited to (1) invalidity, (2) that Defendant did not administer any compounds, (3) no single entity performed all of the steps of the method, and (4) Defendant's product does not meet the claimed dissolution profile. (D.I. 129 at 4). By order dated May 19, 2017, I held that Defendant would not be allowed to raise new non-infringement arguments for the first time at trial and that Defendant had waived the right to contest the "sustained release" limitation of claim 11. (Id. at 3, 5).
Morning Dose Evening Dose
Week 1 1 tablet None
Week 2 1 tablet 1 tablet
Week 3 2 tablets 1 tablet
Week 4 — Onward 2 tablets 2 tablets
(PTX-022.0006; D.I. 131, Ex. 1 at ¶ 62; Tr. 223:24-224:24).
Units 30 min 60 min 120 min 180 min 240 min 360 min 480 min 600 min 1 30 43 64 90 101 101 101 1022 27 40 58 72 96 103 104 1043 30 44 65 82 103 106 107 1074 28 40 58 71 83 102 103 1035 30 43 62 77 90 103 105 1056 30 42 61 78 91 102 103 103Mcan 29 42 61 78 94 103 104 104Min 27 40 58 71 83 101 101 102Max 30 44 65 90 103 106 107 107% RSD 4.2 4.0 5.1 8.7 7.8 1.7 1.8 1.7
(PTX-019.0011; PTX-015.0005; Tr. 232:5-233:13, 262:5-23, 264:7-15).
Defendant's non-infringement arguments as to claim 11 of the '195 patent all center on whether its proposed ANDA product meets the claimed dissolution profile. For example, Defendant argues that Plaintiff "has adduced no evidence that Actavis knows what the dissolution profile of Actavis's ANDA Product will actually be in any given administration." (D.I. 165 at 70, ¶ 180). Specifically, Defendant argues that the dissolution profiles of some of the tablets it tested fall outside the claimed range of between 62% and 90% at two hours. (Id., ¶ 181). Defendant also argues that a specific analysis or interpretation protocol is implicitly required by the claim as being part of the USP Apparatus 2 method. (Id. at 66-67, ¶¶ 159-67).
As an initial matter, I do not think the claim requires performing the separate analysis or interpretation protocol set forth in the United States Pharmacopeia ("USP"). Defendant argues that because the claim requires the dissolution profile to have certain characteristics when measured using USP Apparatus 2, the protocol for interpretation of the data obtained using the method must also be used. (D.I.
While it is certainly true that some of the tablets fall slightly outside of the claimed range for the two hour dissolution data, I disagree that this has any relevance to the question of whether Defendant's product infringes. Defendant does not appear to dispute that some of the tablets it tested fall squarely within the claimed dissolution profile; rather, Defendant suggests that in order to prevail on its infringement claim, Plaintiff must prove that Defendant knows of some particular administration of the ANDA product that will meet the claimed dissolution profile. (Id. at 69-70, ¶¶ 179-182). This is not the law. "[A]an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes." Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995). Plaintiff has adduced sufficient evidence to prove by a preponderance of the evidence that at least some of Defendant's tablets will meet the claimed dissolution profile. This is all that is required for a finding of infringement.
Defendant also argues that Plaintiff cannot prove that it "specifically intends to encourage infringement" because its "proposed label does not even mention the dissolution profile" of its product. (D.I. 165 at 70, ¶¶ 183-85). I have already concluded that Defendant's proposed ANDA product meets the dissolution profile; I do not think it is necessary for infringement of this method claim to find that Defendant's proposed label includes the dissolution profile. The claimed method requires administering a product with specific properties. Defendant's product meets all limitations in the claim and the label instructs on administering the product in the amount and with the frequency recited in the claim. Whether the patient who performs the method by administering the tablets knows that the tablets meet the dissolution profile is irrelevant for the purposes of infringement. Defendant knows that the tablets meet all of the claim limitations and, through its proposed label, encourages patients to administer the tablets in a manner that infringes the claimed method.
For the foregoing reasons, I hold that Plaintiff has proven by a preponderance of the evidence that Defendant induces infringement of claim 11 of the '195 patent.
Plaintiff asserts that Defendant indirectly infringes claims 2, 15, 26, and 31 of the '626 patent. As discussed above, I think the question of infringement of claims 2 and 15 is moot. Prior to trial, the non-infringement arguments raised by Defendant as to the '626 patent were limited to (1) invalidity, (2) that Defendant did not administer any compounds, (3) no single entity performed all of the steps of the method, and (4) the proposed label did not include instructions to administer naltrexone and bupropion "to increase satiety" or "suppress the appetite." (D.I. 129 at 3-4). By order dated May 19, 2017, I held that Defendant would not be allowed to raise
As summarized in the findings of fact above, at trial, Plaintiff presented evidence that Defendant's proposed label induces infringement by meeting all limitations of claims 26 and 31 of the '626 patent. Divided infringement was the only non-infringement defense Defendant presented at trial. (D.I. 165 at 40, ¶ 83). I have already held that claims 26 and 31 involve the single step of administering and do not require a separate diagnosing step. Therefore, I hold that Plaintiff has shown by a preponderance of evidence that Defendant's ANDA product infringes claims 26 and 31 of the '626 patent.
Defendants failed to prove by clear and convincing evidence that claims 26 and 31 of the '626 patent, claim 1 of the '111 patent, and claim 11 of the '195 patent are invalid. Plaintiff proved by a preponderance of the evidence that Defendant directly infringes claim 1 of the '111 patent and indirectly infringes claims 26 and 31 of the '626 patent and claim 11 of the '195 patent.
Plaintiffs should submit an agreed upon form of final judgment within two weeks.
