Shire Dev., LLC v. Watson Pharm., Inc.

• Decision Date: 03 June 2015
• Docket Number: No. 2013–1409.,2013–1409.
• Citation: 114 U.S.P.Q.2d 1885,787 F.3d 1359
• Parties: SHIRE DEVELOPMENT, LLC, Shire Pharmaceutical Development, Inc., Cosmo Technologies Limited, Giuliani International Limited, Plaintiffs–Appellees v. WATSON PHARMACEUTICALS, INC., nka Actavis, Inc., Watson Laboratories, Inc. Florida, Watson Pharma, Inc., nka Actavis Pharma, Inc., Watson Laboratories, Inc., Defendants–Appellants.
• Court: U.S. Court of Appeals — Federal Circuit

787 F.3d 1359

114 U.S.P.Q.2d 1885

SHIRE DEVELOPMENT, LLC, Shire Pharmaceutical Development, Inc., Cosmo Technologies Limited, Giuliani International Limited, Plaintiffs–Appellees

v.WATSON PHARMACEUTICALS, INC., nka Actavis, Inc., Watson Laboratories, Inc. Florida, Watson Pharma, Inc., nka Actavis Pharma, Inc., Watson Laboratories, Inc., Defendants–Appellants.

No. 2013–1409.

United States Court of Appeals, Federal Circuit.

June 3, 2015.

Edgar Haug, Frommer Lawrence & Haug LLP, New York, NY, for plaintiffs-appellees. Also represented by Nicholas F. Giove, Jonathan Herstoff, Elizabeth Murphy, Joseph SaphiaErin A. Lawrence, Jason Aaron Lief, Caroline Bercier, Andrew S. Wasson.

Steven Arthur Maddox, Maddox Edwards, PLLC, Washington, DC, for defendants-appellants. Also represented by Jeremy J. Edwards ; Neil Michael McCarthy, Knobbe, Martens, Olson & Bear, LLP, Washington, DC.

Before PROST, Chief Judge, CHEN^* and HUGHES, Circuit Judges.

Opinion

HUGHES, Circuit Judge.

This case returns to us on remand from the Supreme Court. In Shire Development, LLC v. Watson Pharmaceuticals, Inc., 746 F.3d 1326 (Fed.Cir.2014), we decided an appeal by defendant-appellants (collectively, Watson) from a decision of the United States District Court for the Southern District of Florida. The district court found, among other things, that Watson infringed plaintiffs-appellees' (collectively, Shire's) patent under the district court's constructions of the asserted claims. We reversed the district court's constructions of two claim terms and remanded for further proceedings.

Following our decision in this case, the Supreme Court issued Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., ––– U.S. ––––, 135 S.Ct. 831, –––L.Ed.2d –––– (2015), which clarified how this court should review a district court's construction of a claim term. The Court also vacated and remanded our Shire decision for further consideration in light of this new standard of review. Shire Dev., LLC v. Watson Pharm., Inc., ––– U.S. ––––, 135 S.Ct. 1174, 191 L.Ed.2d 130 (2015). Because this case does not involve factual findings to which we owe deference under Teva, we again reverse the district court's constructions of the disputed claim terms and subsequent findings of infringement, and remand for further proceedings.

I

Shire owns U.S. Patent No. 6,773,720, which claims a controlled-release oral pharmaceutical composition for treating inflammatory bowel diseases

. Shire markets these oral pharmaceutical compositions under the brand name LIALDA ®. After Watson submitted an Abbreviated New Drug Application (ANDA) seeking approval to sell the bioequivalent of LIALDA ®, Shire sued for infringement of the '720 patent. After construing certain relevant claim language, the district court found that Watson's product infringed the '720 patent.

The '720 patent —entitled “Mesalazine Controlled Release Oral Pharmaceutical Composition”—concerns controlled-release oral pharmaceutical compositions for treating inflammatory bowel diseases

, such as Crohn's disease and ulcerative colitis. '720 patent col. 1 ll. 9–13. The active ingredient in these compositions is 5–amino–salicylic acid, which is also known as mesalazine or mesalamine (hereinafter, mesalamine ). Mesalamine treats inflamed areas in the bowel by direct contact with the intestinal mucosal tissue. J.A. 9054. Thus, mesala-mine must pass through the stomach and small intestine without being absorbed into the bloodstream. J.A. 9054. And it must be administered throughout the entire length of the colon so that the mesalamine contacts all affected tissues. J.A. 9054. Given these requirements, the oral composition must contain a high percentage, by weight, of mesalamine. '720 patent col. 3 ll. 52–56.

The '720 patent teaches an inner lipophilic matrix and an outer hydrophilic matrix to address the limitations of the prior art systems.¹ According to the '720 patent, the combination of a lipophilic and hydrophilic matrix in an inner-outer matrix system, respectively, is advantageous because the inner-outer matrix properties cause the mesalamine to be released in a sustained and uniform manner. '720 patent col. 3 ll. 57–59 (“[T]he compositions of the invention provide a release profile of [mesalamine] more homogenous than the traditional systems.”); see also id. at col. 3 l. 60–col. 4 l. 5. The '720 patent also teaches the “advantageous characteristic” of a composition with up to 95% active ingredient by weight. Id. at col. 3 ll. 52–56.

Shire asserts independent claim 1 and dependent claim 3. Claim 1 recites:

1. Controlled-release oral pharmaceutical compositions containing as an active ingredient [mesal-amine], comprising:

a) an inner lipophilic matrix consisting of substances selected from the group consisting of unsaturated and/or hydrogenated fatty acid, salts, esters or amides thereof, fatty acid mono-, di- or triglycerid[e]s, waxes, ceramides, and cholesterol derivatives with melting points below 90° C., and wherein the active ingredient is dispersed both in said the lipophilic matrix and in the hydrophilic matrix;

b) an outer hydrophilic matrix wherein the lipophilic matrix is dispersed, and said outer hydrophilic matrix consists of compounds selected from the group consisting of polymers or copolymers of acrylic or methacrylic acid, alkylvinyl polymers, hydroxyalkyl celluloses, carboxyalkyl celluloses, polysaccharides, dextrins, pectins

, starches and derivatives, alginic acid, and natural or synthetic gums;

c) optionally other excipients;

wherein the active ingredient is present in an amount of 80 to 95% by weight of the total composition, and wherein the active ingredient is dispersed both in the lipophilic matrix and in the hydrophilic matrix.

Id. at col. 6 ll. 7–30. Claim 3 depends from claim 1 and requires that the composition be in the form of tablets, capsules, or minitablets. Id. at col. 6 ll. 35–36.

The '720 patent teaches a three-step process to arrive at the claimed composition. Id. at col. 2 ll. 48–59. First, one or more low melting, lipophilic excipients² are mixed with mesalamine

during heating. Id. at col. 2 ll. 50–53. Second, the mixture is cooled to form the lipophilic matrix and then reduced in size into “matrix granules containing the active ingredient.” Id. at col. 2 ll. 54–56. Third, the lipophilic matrix granules are mixed together with hydrophilic excipients and compressed to form tablets. Id. at col. 2 ll. 50–53, col. 3 ll. 40–45.

During prosecution of the '720 patent, the examiner initially rejected the applicants' claims as obvious in view of GB 2 245 492 A (Franco); obvious and anticipated in view of U.S. Patent No. 5,593,690 (Akiyama) ; and obvious in view of the combination of U.S. Patent No. 5,851,555 (Sanghvi) and U.S. Patent No. 6,395,300 (Straub). J.A. 15469–71. The examiner explained that Franco taught a pharmaceutical composition with an active core, a lipophilic coating, and a hydrophilic film. J.A. 15469.

In response, the applicants stated that Franco disclosed a reservoir system where “the active ingredient is confined within a core which acts as a reservoir from which the active ingredient is released via the erosion of the outer coating. However, as to the present invention, the active ingredient is dispersed in a lipophilic matrix, not in an isolated core.” J.A. 15480–81.

The applicants then distinguished Akiyama based on the claimed invention's two matrices and high active ingredient concentration. The applicants argued that Akiyama “fail[s] to disclose or suggest the two matrices and the arrangement of the matrices as set forth in the claimed invention. The arrangement of the matrices in the present invention aid[s] in the combined release of an active ingredient via diffusion from a lipophilic matrix.” J.A. 15479. The applicants also argued that Akiyama's composition contained the “active ingredient ... in an amount much lower than that according to the claimed invention”—Akiyama taught an active ingredient in granules in an amount ranging from 0.005–75% by weight, but the applicants' amended claim taught 80–95%. J.A. 15478–79.

To distinguish Sanghvi and Straub, the applicants again focused on a lack of two separate matrices: Sanghvi “fails to disclose a system containing two separate matrices. [It] merely discloses formulations obtained by mixing together hydrophilic and lipophilic substances into a single matrix.” J.A. 15481. When discussing the combination of Sanghvi and Straub, the applicants explained that “[w]hile the publications might teach the advantageous results of using a lipophilic matrix, the publications fail to disclose or suggest a composition comprising a combination of two separate matrices. In fact, there is no mention or suggestion of a composition utilizing different control mechanisms.” J.A. 15482.

The examiner maintained her rejection of the pending claims as obvious in view of Franco. The examiner also rejected the claims because “the feature upon which applicant relies (i.e., the active ingredient is dispersed in a lipophilic matrix) is not recited in the rejected claims.” J.A. 15489. Further, the examiner explained that the limitation-at-the-time—“active ingredient is at least partly inglobated”—“does not limit the claim to ‘active ingredient is dispersed in a lipophilic matrix’ as alleged by the applicant.” J.A. 15489.

In response, the applicants maintained that Franco taught a reservoir system, but that the claimed invention “relates to a ‘multimatrix system’ and not to a reservoir system.” J.A. 15492; see also J.A. 15492 (“FRANCO et al. do[es] not teach an inner lipophilic matrix or an outer hydrophilic matrix.... The composition taught by FRANCO et al. is not based on an actual matrix.”). The applicants also amended their claims to state that the active ingredient is dispersed in the lipophilic matrix and added a Markush group³ for both the inner lipophilic matrix and the outer hydrophilic matrix. J.A. 15491–92, 15496, 15499. Following an interview with the examiner, the claims were...