580 F.3d 1340 (Fed. Cir. 2009), 2009-1020, Amgen Inc. v. F. Hoffman-LA Roche Ltd.

Docket Nº:2009-1020, 2009-1096.
Citation:580 F.3d 1340, 92 U.S.P.Q.2d 1289
Opinion Judge:SCHALL, Circuit Judge.
Party Name:AMGEN INC., Plaintiff-Cross Appellant, v. F. HOFFMANN-LA ROCHE LTD, Roche Diagnostics GMBH, and Hoffmann-LA Roche Inc., Defendants-Appellants.
Attorney:Lloyd R. Day, Jr., Day Casebeer Madrid & Batchelder LLP, of Cupertino, CA, argued for plaintiff-cross appellant. With him on the brief were David M. Madrid, Linda A. Sasaki-Baxley and Jonathan D. Loeb. of counsel on the brief were Stuart L. Watt, Wendy A. Whiteford and Erica S. Olson, Amgen Inc.,...
Judge Panel:Before MAYER, CLEVENGER, and SCHALL, Circuit Judges.
Case Date:September 15, 2009
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1340

580 F.3d 1340 (Fed. Cir. 2009)

92 U.S.P.Q.2d 1289

AMGEN INC., Plaintiff-Cross Appellant,

v.

F. HOFFMANN-LA ROCHE LTD, Roche Diagnostics GMBH, and Hoffmann-LA Roche Inc., Defendants-Appellants.

Nos. 2009-1020, 2009-1096.

United States Court of Appeals, Federal Circuit.

September 15, 2009

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Lloyd R. Day, Jr., Day Casebeer Madrid & Batchelder LLP, of Cupertino, CA, argued for plaintiff-cross appellant. With him on the brief were David M. Madrid, Linda A. Sasaki-Baxley and Jonathan D. Loeb. of counsel on the brief were Stuart L. Watt, Wendy A. Whiteford and Erica S. Olson, Amgen Inc., of Thousand Oaks, CA; Cecilia H. Gonzalez and Margaret D. MacDonald, Howrey LLP, of Washington, DC. Of counsel was Christian E. Mammen, Day Casebeer Madrid & Batchelder LLP, of Cupertino, CA.

Leora Ben-Ami, Kaye Scholer LLP, of New York, NY, argued for defendants-appellants. With her on the brief were Thomas F. Fleming, Patricia A. Carson, Christopher T. Jagoe, Sr. and Howard S. Suh. Of counsel on the brief were Lee Carl Bromberg, Timothy M. Murphy and Julia Huston, Bromberg & Sunstein LLP, of Boston, MA. Of counsel were Daniel Forchheimer, Matthew McFarlane, and Krista M. Rycroft, Kaye Scholer LLP, of New York, NY; and Kimberly J. Seluga, Nicole Rizzo Smith and Keith E. Toms, Bromberg & Sunstein LLP, of Boston, MA.

Before MAYER, CLEVENGER, and SCHALL, Circuit Judges.

SCHALL, Circuit Judge.

This is a patent case. Amgen Inc. (" Amgen" ) is the owner of

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U.S. Patent Nos. 5,441,868 (" the '868 patent" ), 5,547,933 (" the '933 patent" ), 5,618,698 (" the '698 patent" ), 5,756,349 (" the '349 patent" ), and 5,955,422 (" the '422 patent" ). The patents relate to the production of the protein erythropoietin (" EPO" ) using recombinant deoxyribonucleic acid (" DNA" ) technology. All five patents share a common specification and descend from Application No. 06/675,298 (" the '298 application" ), which issued as now-expired U.S. Patent No. 4,703,008 (" the '008 patent" ).

In November of 2005, Amgen brought a declaratory judgment action against F. Hoffman-La Roche Ltd, Roche Diagnostics GMBH, and Hoffman-La Roche Inc. (" Roche" ) in the United States District Court for the District of Massachusetts, alleging that Roche's product, MIRCERA® , would infringe Amgen's five patents if imported into the United States. Roche responded with affirmative defenses and counterclaims that Amgen's asserted patents were invalid and not infringed. In October of 2008, following rulings of summary judgment and judgment as a matter of law (" JMOL" ), and a jury trial, the court entered judgment that the '868, '933, '698, and '422 patents were infringed and not invalid, and that the '349 patent was neither invalid nor infringed. Amgen, Inc. v. F. Hoffman-La Roche Ltd., No. 05-12237-WGY, slip op. at 1-2 (D.Mass. Oct. 17, 2008) (" Final Judgment " ). Accordingly, the court granted Amgen declaratory relief and permanently enjoined Roche from marketing MIRCERA® in the United States. Id.

Roche appeals from several rulings of the court. Specifically, Roche challenges the court's rulings that none of the claims-in-suit were invalid for obviousness-type double patenting, Amgen, Inc. v. F. Hoffman-La Roche Ltd., 581 F.Supp.2d 160, 173, 186, 192 (D.Mass.2008); and that claim 1 of the ' 422 patent was neither anticipated nor indefinite and infringed, id. at 194, 198, 204. Roche also challenges the court's rulings sustaining the jury's verdict that claims 3, 7, and 8 of the '933 patent were neither anticipated nor indefinite; and that claims 3, 7, and 8 of the '933 patent, claims 1 and 2 of the '868 patent, and claims 6-9 of the '698 patent were literally infringed.

Amgen cross-appeals from the court's rulings that claim 7 of the '349 patent and claims 9, 11, and 14 of the '933 patent were not infringed. Amgen also cross-appeals from the court's ruling vacating the jury's verdict that claim 12 of the '933 patent was infringed under the doctrine of equivalents (" DOE" ). Id. at 205.

We vacate the court's grant of summary judgment and of JMOL to Amgen of no invalidity for obviousness-type double patenting of claims 3, 7, and 8 of the ' 933 patent; claim 1 of the '422 patent; and claim 7 of the '349 patent. We therefore remand to the district court for an obviousness-type double patenting analysis of those claims in light of this opinion. We also vacate the court's grant of JMOL to Roche of non-infringement of claim 7 of the '349 patent and remand to the district for a new trial on infringement of that claim. We affirm the court's judgment in all other respects.

BACKGROUND

I

As noted, the patents at issue relate to the production of EPO using recombinant DNA technology. EPO, which is a naturally occurring protein (or polypeptide), stimulates the production of red blood cells through a process called erythropoiesis. Amgen, 581 F.Supp.2d at 168. The production of EPO is useful in treating blood disorders characterized by a low hematocrit, which is a low ratio of red blood cells to total blood cells. Id. One such blood disorder is anemia. In a clinical study

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performed in 1979-80, Dr. Eugene Goldwasser attempted to treat anemic patients with EPO isolated from human urine. Id. at 168. He had limited success, however, because the EPO recovered from urine was low-yield, of high impurity, and unstable. Id. at 168-69.

Rather than attempting to obtain EPO from natural sources such as human urine, a team of Amgen researchers led by Dr. Fu-Kuen Lin identified a means of producing usable amounts of EPO via recombinant DNA technology. Id. at 169. The common specification of Amgen's patents describes the production of recombinant EPO. To produce EPO, Dr. Lin made an expression vector carrying the human EPO DNA sequence he had discovered. See '422 patent col. 11 ll.1-10. An expression vector is a circular piece of DNA that is inserted into a host cell to produce a protein. Id. col.2 ll.36-54; figs.2 & 3. He then injected, or transfected, host Chinese hamster ovary (" CHO" ) cells with the expression vector. Id. col. 11 ll.5-10

The transfected CHO cells use the EPO DNA sequence to form a protein with the 166 amino acid sequence of EPO shown in Figure 6 of the common specification of the patents. Id. fig.6. Prior to secretion of EPO from the cell, the final amino acid, or the C-terminal amino acid, of the 166 amino acid sequence is cleaved off, leaving a 165 amino acid protein. Amgen, 581 F.Supp.2d at 170. Also prior to secretion, carbohydrates are attached to certain sites on EPO in a process called glycosylation, which results in a glycoprotein. Id. Thus, Dr. Lin's transfected CHO cells ultimately yield a glycoprotein with the 165 amino acid sequence of human EPO. Id. Recombinant EPO produced in this manner can bind to the EPO receptor and stimulate erythropoiesis. Id. at 169.

On November 30, 1984, Amgen submitted to the United States Patent and Trademark Office (" PTO" ) the '298 application, from which Amgen's five patents descend. Id. at 180. The '298 application originally contained claims drawn to, inter alia, DNA sequences, host cells, processes of producing polypeptides, polypeptides, and pharmaceutical compositions. Id. In 1986, the PTO subjected Amgen's '298 application to a restriction requirement, which identified claims drawn to DNA, cells, polypeptides, and pharmaceutical compositions as each directed to patentably distinct subject matter. Id. The PTO examiner stated that, under 35 U.S.C. § 121, restriction to one of the following inventions was required:

I. Claims 1-13, 16, 39-41, 47-54, and 59, drawn to polypeptide, classified in Class 260, subclass 112.

II. Claims 14, 15, 17-36, 58, and 61-72, drawn to DNA, classified in Class 536, subclass 27.

III. Claims 37-38, drawn to plasmid, classified in Class 435, subclass 317.

IV. Claims 42-46, drawn to cells, classified in Class 435, subclass 240.

V. Claims 55-57, drawn to pharmaceutical composition, classified in Class 435, subclass 177.

VI. Claim 60, drawn to assay, classified in Class 435, subclass 6.1

Id. In response, Amgen elected to prosecute Group II claims in the '298 application,

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which were drawn to DNA and host cells. Id. Ultimately, the '298 application issued on October 27, 1987, as the now-expired '008 patent entitled " DNA Sequences Encoding Erythropoietin." The ' 008 patent claimed DNA sequences encoding EPO and host cells transformed or transfected with those DNA sequences. '008 patent col.40 ll.17-68.

On October 23, 1987, subsequent to the restriction requirement but before the '008 patent issued, Amgen prosecuted the claims withdrawn from the '298 application in continuation application 07/113,178 (" the '178 application" ) and continuation application 07/113,179 (" the '179 application" ). Amgen, 581 F.Supp.2d at 180. After a series of intervening continuation applications and interferences, the '933 patent eventually emerged from the '178 application, while the '422, '349, '868, and '698 patents eventually emerged from the ' 179 application. As a result, all five patents-in-suit ('933, '422, '349, ' 868, and '698) claim priority to the '298 application, share a common specification, and have the title " Production of Erythropoietin" or " Production of Recombinant Erythropoietin."

In broad strokes, the '933 patent claims recombinant EPO, a pharmaceutical composition comprising recombinant EPO, and methods of treating kidney dialysis patients by administering pharmaceutical compositions comprising recombinant EPO. '933 patent col.38 l.17-col.40 l.11. The...

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