Lilly and Co. v. Barr Laboratories

• Citation: 222 F.3d 973,55 USPQ2d 1609
• Parties: (Fed. Cir. 2000) ELI LILLY AND COMPANY, Plaintiff-Cross Appellant, v. BARR LABORATORIES, INC., and APOTEX, INC. and BERNARD C. SHERMAN, and GENEVA PHARMACEUTICALS, INC., Defendants-Appellants, and INTERPHARM, INC., Defendant. 99-1262, -1263, -1264, -1303 DECIDED:
• Decision Date: 09 August 2000
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 973

222 F.3d 973 (Fed. Cir. 2000)

ELI LILLY AND COMPANY, Plaintiff-Cross Appellant, v. BARR LABORATORIES, INC., and APOTEX, INC. and BERNARD C. SHERMAN, and GENEVA PHARMACEUTICALS, INC., Defendants-Appellants, and INTERPHARM, INC., Defendant.

99-1262, -1263, -1264, -1303

United States Court of Appeals for the Federal Circuit

DECIDED: August 9, 2000

Appealed from: United States District Court for the Southern District of Indiana Chief Judge Sarah Evans Barker

[Copyrighted Material Omitted]

Charles E. Lipsey, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiff-cross appellant, Eli Lilly and Company. With him on the brief were Allen M. Sokal, Kenneth M. Frankel, and David S. Forman. Of counsel was L. Scott Burwell. Of counsel on the brief were Douglas K. Norman, andJames P. Leeds, Eli Lilly and Company, of Indianapolis, Indiana.

Richard S. Clark, Rochelle K. Seide, Marta E. Delsignore, Louis Sorell, Robert Neuner, and Thomas J. Parker, Baker & Botts, of New York, New York, for defendant-appellant, Geneva Pharmaceuticals, Inc.

George C. Lombardi, Winston & Strawn, of Chicago, Illinois, argued for defendant-appellant Barr Laboratories, Inc. With him on the brief were James F. Hurst,Dan K. Webb, Bradley C. Graveline, Christine J. Siwik, and Taras A. Gracey. Of counsel on the brief was Mark E. Waddell, Bryan Cave, LLP, of New York, New York. Of counsel was Derek John Sarafa.

Hugh L. Moore, and Diane I. Jennings, Lord, Bissell & Brook, of Chicago, Illinois for defendants-appellants Apotex, Inc. and Bernard C. Sherman.

Before MAYER, Chief Judge, FRIEDMAN, Senior Circuit Judge, and GAJARSA, Circuit Judge.

GAJARSA, Circuit Judge.

Barr Laboratories, Inc. ("Barr"), in December 1995, filed an Abbreviated New Drug Application ("ANDA") under the Hatch-Waxman Act, see 21 U.S.C. § 355(j)(2)(A)(vii)(IV) (1994), seeking approval from the Food and Drug Administration ("FDA") to market fluoxetine hydrochloride as an antidepressant. Fluoxetine hydrochloride is the active ingredient in Eli Lilly and Company's ("Lilly's") antidepressant drug Prozac. Lilly, on April 10, 1996, pursuant to 35 U.S.C. § 271(e)(2)(A) (1994), brought an infringement action in the United States District Court for the Southern District of Indiana, alleging that Barr's ANDA application infringed claim 5 of U.S. Patent No. 4,314,081 ("the '081 patent") and claim 7 of U.S. Patent No. 4,626,549 ("the '549 patent"). Lilly subsequently brought infringement actions against Geneva Pharmaceuticals, Inc., Apotex, Inc., and Bernard C. Sherman, all of whom had also filed ANDA applications with the FDA, and the actions were consolidated.

Barr and the other defendants (collectively "Barr") argued, inter alia, that claim 5 of the '081 patent and claim 7 of the '549 patent are invalid for failure to comply with the best mode requirement and that claim 7 of the '549 patent is invalid for double patenting. On cross-motions for summary judgment, the district court held in favor of Lilly, concluding that neither claim violates the best mode requirement and that no double patenting exists. ¹ Barr appeals the district court's summary judgment rulings, and Lilly cross-appeals the district court's ruling that Barr was entitled to a jury trial on its invalidity counterclaims. Because we hold that both claims comply with the best mode requirement but that claim 7 of the '549 patent is invalid for obviousness-type double patenting, we affirm-in-part and reverse-in-part. Accordingly, we also vacate the district court's ruling that Barr is entitled to a jury trial because we dispose of the validity issues on appeal.

I. BACKGROUND

The present appeal concerns the validity of claim 5 of the '081 patent that covers the pharmaceutical compound fluoxetine hydrochloride--the active ingredient in Lilly's antidepressant drug Prozac--and claim 7 of the '549 patent that covers the administration of fluoxetine hydrochloride to inhibit serotonin uptake in an animal's brain neurons.

On January 10, 1974, Lilly filed application Serial No. 432,379 ("the '379 application") containing claims for a class of compounds, therapeutic methods of using those compounds, and pharmaceutical compositions comprising those compounds. The '379 application named Bryan B. Molloy ("Molloy") and Klaus K. Schmiegel as inventors. After its filing, the '379 application engendered a progeny of divisional applications, continuation applications, and patents that rivals the Hapsburg legacy. When the last patent stemming from the '379 application issued in December 1986, the application had spawned four divisional applications, three continuation applications, and six patents. During that twelve-year period, Lilly obtained six patents relating to fluoxetine hydrochloride--the '081 and '549 patents, as well as U.S. Patent Nos. 4,018,895 ("the '895 patent"), 4,194,009 ("the '009 patent"), 4,590,213 ("the '213 patent"), and 4,329,356 ("the '356 patent"). The '213 and '356 patents did not stem from the '379 application, and during the course of this litigation, Lilly disclaimed those patents.

The '009 patent, which expired in April 1994, claimed a class of pharmaceutical compounds, including fluoxetine hydrochloride, for administration in pyschotropically effective amounts. The '895, '213, and '356 patents related to methods for treating particular ailments by administering a pharmaceutical compound within a class of compounds that includes fluoxetine hydrochloride. Specifically, the '895 patent, which expired in April 1994, concerned the treatment of humans suffering from depression; the '213 patent concerned the treatment of humans suffering from anxiety; and the '356 patent concerned the treatment of animals suffering from hypertension.

In December 1995, pursuant to a Paragraph IV certification under the Hatch-Waxman Act, see 21 U.S.C § 355(j)(2)(A)(vii)(IV) (1994),² Barr filed an ANDA application seeking FDA approval to market fluoxetine hydrochloride as an antidepressant. Lilly responded by bringing an action in district court under 35 U.S.C. § 271(e)(2)(A) (1994), ³ asserting that Barr's ANDA application infringed claim 7 of the '549 patent and claim 5 of the '081 patent.

At the district court, Barr argued that both claims are invalid for failure to comply with the best mode requirement and that claim 7 of the '549 patent is invalid for obviousness-type double patenting. With regard to the issue of best mode, Barr advanced two independent arguments. First, Barr argued that the claims are invalid because the patents failed to disclose Molloy's preferred method for synthesizing p-trifluoromethylphenol--a starting material necessary to make fluoxetine hydrochloride. Second, Barr argued that the claims are invalid because the patents failed to disclose Molloy's preferred solvent for recrystallizing fluoxetine hydrochloride. With regard to the issue of double patenting, Barr advanced three independent arguments, contending that claim 7 of the '549 patent is invalid in light of (1) the '356 and '213 patents, (2) the '895 and '009 patents, and (3) the '081 patent.

On cross motions for summary judgment, the district court held in favor of Lilly, concluding that claim 5 of the '081 patent and claim 7 of the '549 patent do not violate the best mode requirement and that claim 7 is not invalid for double patenting under any of Barr's theories. This appeal followed. Because these issues concern disparate parts of the record evidence, we describe separately the background relevant to each argument.

The Claims at Issue

A. Claim 5 of the '081 patent

Stemming directly from the '379 application, the '081 patent issued on February 2, 1982. Claim 5 of the '081 patent, which depends on claim 1, covers the compound N-methyl 3-(p-trifluoromethylphenoxy)-3-phenylpropylamine hydrochloride--commonly referred to as fluoxetine hydrochloride--and pharmaceutically-acceptable acid addition salts thereof formed with non-toxic acids. Claim 1, in turn, provides as follows:

A compound of the formula

[Tabular or Graphical Material Omitted]

wherein each R' is independently H or CH3 and R is m- or p-chlorophenyl, o-, m-, or p-methoxyphenyl, phenyl, o- or m-fluorophenyl, o- or p-tolyl, 2,4-difluorophenyl or p-trifluoromethylphenyl and acid addition salts formed with pharmaceutically-acceptable acids.

B. Claim 7 of the '549 patent

On March 31, 1986, Lilly filed continuation application Serial No. 846,448, claiming the benefit of the 1974 filing date of the '379 application under 35 U.S.C. § 120. On December 2, 1986, the application matured into the '549 patent. Claim 7 of the '549 patent, which depends on claim 4, relates to blocking the uptake of the monoamine serotonin in an animal's brain neurons through administration of the compound N-methyl-3-(p-trifluoromethylphenoxy)-3-phenylpropylamine hydrochloride--commonly referred to as fluoxetine hydrochloride. Claim 4 provides as follows:

A method of blocking the uptake of monoamines by brain neurons in animals comprising administering to said animal a monoamine blocking amount of a compound of the formula

[Tabular or Graphical Material Omitted]

wherein each R' is independently hydrogen or methyl; wherein R is naphthyl or

[Tabular or Graphical Material Omitted]

wherein R" and R"' are halo, trifluoromethyl, C1 -C4 alkyl, C1 -C3 alkyloxy or C3 -C4 alkenyl; and wherein n and m are 0, 1 or 2; and acid addition salts thereof formed with pharmaceutically-acceptable acids.

C. Best Mode: p-trifluoromethylphenol

Both the '081 and '549 patents identify p-trifluoromethylphenol as a starting material for making fluoxetine hydrochloride. During the early stages of experimentation, Molloy used commercial p-trifluoromethylphenol purchased from Marshallton Research Laboratories. However, when large quantities of p-trifluoromethylphenol were necessary for clinical testing, Lilly's division director refused to purchase p-trifluoromethylphenol due to...