Purdue Pharma v. Boehring Ingelheim

• Decision Date: 01 February 2001
• Parties: (Fed. Cir. 2000) PURDUE PHARMA L.P., THE PURDUE FREDERICK COMPANY THE P.F. LABORATORIES, INC., and THE PURDUE PHARMA COMPANY, Plaintiffs-Appellees, v. BOEHRINGER INGELHEIM GMBH, ROXANE LABORATORIES, INC., and BOEHRINGER INGELHEIM CORPORATION, Defendants-Appellants. 00-1398 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1359

237 F.3d 1359 (Fed. Cir. 2000)

PURDUE PHARMA L.P., THE PURDUE FREDERICK COMPANY THE P.F. LABORATORIES, INC., and THE PURDUE PHARMA COMPANY, Plaintiffs-Appellees, v. BOEHRINGER INGELHEIM GMBH, ROXANE LABORATORIES, INC., and BOEHRINGER INGELHEIM CORPORATION, Defendants-Appellants.

00-1398

United States Court of Appeals for the Federal Circuit

DECIDED: February 1, 2001

CORRECTED: FEBRUARY 6, 2001

Appealed from: United States District Court for the Southern District of New York

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Herbert F. Schwartz, Fish & Neave, of New York, New York, argued for plaintiffs-appellees. With him on the brief were Robert J. Goldman, Kelsey I. Nix, Richard A. Inz, and Jennifer D. Choe.

John F. Sweeney, Morgan & Finnegan, L.L.P., of New York, New York, argued for defendants-appellants. With him on the brief were Israel Blum, Joseph A. DeGirolamo, Tony V. Pezzano, Andrea L. Wayda, and Bruce D. Radin. Of counsel on the brief were Robert P. Raymond and Mary-Ellen M. Devlin, Boehringer Ingelheim Corporation, of Ridgefield, Connecticut.

Judge Sidney H. Stein

Before MAYER, Chief Judge, MICHEL and SCHALL, Circuit Judges.

MAYER, Chief Judge.

Boehringer Ingelheim GmbH, Roxane Laboratories, Inc. and Boehringer Ingelheim Corporation (collectively, "Roxane") appeal the order of the United States District Court for the Southern District of New York granting the motion brought by Purdue Pharma L.P., The Purdue Frederick Company, The P.F. Laboratories, Inc. and The Purdue Pharma Company (collectively, "Purdue") to preliminarily enjoin Roxane from infringing, actively inducing infringement of, or contributing to the infringement of Purdue's United States Patents Nos. 5,549,912 ('912 patent) (claim 2), 5,508,042 ('042 patent) (claims 1 and 2), and 5,656,295 ('295 patent) (claim 8) directed toward a "controlled release oxycodone" formulation of pain medication. Purdue Pharma L.P., et al. v. Boerhinger Ingelheim GmbH, et al., No. 99-CV-3658, (S.D.N.Y. May 25, 2000) (order for a preliminary injunction); (May 16, 2000) (order granting motion). Because the court did not abuse its discretion in granting the injunction, we affirm and remand.

Background

Purdue and Roxane are pharmaceutical companies that each have developed controlled release oxycodone medications for the treatment of moderate to severe pain. Purdue is the owner of the '912, '042, and '295 patents, which are respectively a continuation-in-part, divisional application and continuation-in-part of United States Patent No. 5,266,331 (the '331 parent). The asserted claims of the patents-in-suit are similar, and their specifications are virtually identical. Claim 2 of the '912 patent is representative of the asserted claims and reads as follows:

A controlled release oxycodone formulation for oral administration to human patients, comprising from about 10 to about 40 mg oxycodone or a salt thereof, said formulation providing a mean maximum plasma concentration of oxycodone from about 6 to about 60 ng/ml from a mean of about 2 to about 4.5 hours after administration, and a mean minimum plasma concentration from about 3 to about 120 ng/ml from a mean of about 10 to about 14 hours after repeated administration every 12 hours through steady-state conditions.

'912 patent, col. 20, ll. 45-54.

During the prosecution of the '912 patent, the applicants filed a terminal disclaimer with respect to the '331 parent to overcome a rejection based on the parent. At the examiner's suggestion, the applicants amended the specification of the '912 patent to claim priority of the filing date of the '331 parent.

On May 18, 1999, Purdue filed suit against Roxane alleging that its oxycodone controlled-release product, Roxycodone SR, infringed claims of the '912, '042 and '295 patents. Roxane filed counterclaims of invalidity (based on anticipation of the patents-in-suit) and inequitable conduct. On October 1, 1999, Purdue moved for a preliminary injunction. By stipulated order, the parties conducted expedited discovery, and on November 15-18, 1999, the district court held an evidentiary hearing that included live fact witness testimony and submitted expert declarations. Purdue's and Roxane's respective economics experts submitted written testimony concerning the likelihood of price erosion, loss of market share, and market expansion.

Following the hearing, on February 3, 2000, the Food and Drug Administration independently stayed its approval of Roxane's oxycodone pain relief product in response to a Citizen's Petition brought by Purdue. Roxane's accused product has therefore never been marketed in the United States. In contrast, Purdue's controlled release oxycodone product, OxyContin, accounted for approximately 63% of Purdue's 1999 sales and a projected 79% of Purdue's 2000 sales. Purdue has chosen not to license its patent portfolio.

On May 16, 2000, the district court issued its order granting Purdue's motion for preliminary injunctive relief, holding that: (1) Purdue was likely to prove infringement under a claim construction of the term "administration" encompassing values for the time of maximum oxycodone blood plasma concentration ("Tmax") determined in a multiple dose steady-state study; (2) Roxane's defense that the '331 parent anticipates and renders invalid the patents-in-suit lacks substantial merit; (3) Roxane's inequitable conduct defense that applicants made an improper claim of priority to the '331 parent lacks substantial merit; and (4) Purdue would suffer irreparable harm if no preliminary injunction were to issue. The district court entered the injunction on May 25, 2000.

Discussion

As the moving party, Purdue was required to establish its right to a preliminary injunction in light of four factors: "(1) a reasonable likelihood of success on the merits; (2) irreparable harm if the injunction were not granted; (3) the balance of the hardships and (4) the impact of the injunction on the public interest." Polymer Techs. v. Bridwell, 103 F.3d 970, 973; 41 USPQ2d 1185, 1188 (Fed. Cir. 1996) (citing Nutrition 21 v. United States, 930 F.2d 867, 869, 18 USPQ2d 1347, 1348-49 (Fed. Cir. 1991)). If Purdue as the moving party "clearly establishe[s] the first factor (by making a 'clear showing' of both validity and infringement), it [is] entitled to a rebuttable presumption" of irreparable harm. Id. The only issues Roxane argues on appeal are the district court's determination of factors one and two.

The decision to grant a preliminary injunction is within the discretion of the district court. See 35 U.S.C. § 283 (1994); Polymer Techs.,103 F.3d at 973, 41 USPQ2d at 1188. An abuse of discretion may be shown if the district court made a clear error of judgment, or based its decision on an erroneous legal conclusion or clearly erroneous factual findings. Canon Computer Sys. Inc. v. Nu-Kote Int'l, Inc., 134 F.3d 1085, 1087-88, 45 USPQ2d 1355, 1358 (Fed. Cir. 1998). We are also mindful that all findings of fact and conclusions of law at the preliminary injunction stage are subject to change upon the ultimate trial on the merits. See Illinois Tool Works, Inc. v. Grip-Pak, Inc., 906 F.2d 679, 681, 15 USPQ2d 1307, 1308-09 (Fed. Cir. 1990) (citations omitted).

With respect to the first factor of reasonable likelihood of success on the merits, Purdue was required to show that "in light of the presumptions and burdens that will inhere at trial on the merits, (1) it will likely prove [infringement] and (2) its infringement claim will likely withstand [Roxane's] challenges to the validity and enforceability of the . . . patent[s]." Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364, 42 USPQ2d 1001, 1003 (Fed. Cir. 1997) (quoting New England Braiding Co. v. A.W. Chesterson Co., 970 F.2d 878, 882-83, 23 USPQ2d 1622, 1625-26 (Fed. Cir. 1992)). If Roxane defends with evidence raising a "substantial question" concerning validity, enforceability, or infringement, Purdue was required to produce countervailing evidence demonstrating that these defenses "lack[ ] substantial merit." Genentech, Inc., 108 F.3d at 1364, 42 USPQ2d at 1001.

An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 24 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en banc). Claim construction is a question of law that we review de novo. Cybor v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc). Infringement, both literal and under the doctrine of equivalents, is a question of fact. Insituform Techs., Inc. v. Cat Contracting, Inc., 161 F. 3d 688, 692, 48 USPQ2d 1610, 1614 (Fed. Cir. 1998).

The claim language at issue concerns the type of administration (single dose, or multiple dose, steady-state) used to determine the mean time "after administration" at which the maximum mean plasma level of oxycodone in human patients is reached. Roxane contends that the claim language limits the determination of Tmax to single dose studies, while Purdue contends that the language encompasses both single dose and multiple dose, steady-state studies.

Finding the language of the claim ambiguous, and ultimately relying on the specification and the "'fundamental purpose and significance' of the invention," the district court held that the range of values for Tmax "after administration" encompasses values obtained from multiple dose, steady-state studies. Purdue Pharma L.P., slip op. at 20. Roxane argues that this claim construction is erroneous because the plain language of the claim shows that when the drafters wanted to require multiple dose administrations (as for mean minimum plasma concentration values), they so specified, while specification examples and language and the '331 parent refer to single dose...