Amgen, Inc. v. Genetics Institute, Inc.

• Decision Date: 25 October 1996
• Docket Number: No. 95-1247,95-1247
• Citation: 98 F.3d 1328,40 USPQ2d 1524
• Parties: AMGEN, INC., Plaintiff-Appellee, and Ortho Biotech, Inc., OMJ Pharmaceutical, Inc. and Ortho Pharmaceutical Corp., Plaintiffs-Appellees, v. GENETICS INSTITUTE, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1328

98 F.3d 1328

40 U.S.P.Q.2d 1524

AMGEN, INC., Plaintiff-Appellee,

and

Ortho Biotech, Inc., OMJ Pharmaceutical, Inc. and Ortho

Pharmaceutical Corp., Plaintiffs-Appellees, v. GENETICS INSTITUTE, INC., Defendant-Appellant.

No. 95-1247.

United States Court of Appeals, Federal Circuit.

Oct. 25, 1996.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Jan. 3, 1997.

D. Dennis Allegretti, Banner & Allegretti, Boston, MA, argued, for plaintiff-appellee. With him on the brief, were Dale A. Malone and John P. Iwanicki. Also on the brief, were Lloyd R. Day, Jr., David M. Madrid, and Robert M. Galvin, Cooley Godward Castro Huddleson & Tatum, Palo Alto, CA, and Steven M. Odre and Stuart L. Watt, Amgen, Inc., Thousand Oaks, California.

David F. Dobbins, Patterson, Belknap, Webb & Tyler, L.L.P., New York City, argued, for plaintiffs-appellees. With him on the brief, were Gregory L. Diskant, Jeffrey I.D. Lewis, and Richard S. Eisert.

Paul H. Heller, Kenyon & Kenyon, New York City, argued, for defendant-appellant. With him on the brief, were Paul Lempel and John R. Moore. Also on the brief, were William F. Lee and David B. Bassett, Hale & Dorr, Boston, MA, and Scott A. Brown and Bruce M. Eisen, Genetics Institute, Inc., Cambridge, MA. Of counsel, was Lawrence V. Stein, Genetics Institute, Inc.

Before NEWMAN, LOURIE and BRYSON, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

At issue in this declaratory action is United States Patent No. 5,322,837 (the '837 patent) entitled "Homogeneous Erythropoietin Compositions and Methods of Using Same." The patentee is Genetics Institute, Inc.; the accused infringers are Amgen, Inc. and its distributors or licensees Ortho Biotech, Inc., OMJ Pharmaceuticals, Inc. and Ortho Pharmaceutical Corp. (collectively herein Amgen).

The '837 patent is a continuation of United States Patent No. 4,677,195 (the '195 patent), having the same specification. In a previous suit involving the same parties in interest, styled Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 18 USPQ2d 1016 (Fed.Cir.), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991) (Amgen II ), the claims of the '195 patent were held to be invalid under 35 U.S.C. § 112 for lack of enablement. In the case now before us the district court held, ¹ upon summary judgment, that this suit for infringement of the claims of the '837 patent is precluded by the ruling of non-enablement in Amgen II. We affirm.

SUMMARY JUDGMENT

Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986). The appellate court must independently determine whether the standards for summary judgment have been met. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 72 F.3d 857, 860, 37 USPQ2d 1161, 1162 (Fed.Cir.1995). On motion for summary judgment, the court views the evidence and any disputed factual issues in the light most favorable to the party opposing the motion. Matsushita Elec. Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986); Allied Colloids, Inc. v. American Cyanamid Co., 64 F.3d 1570, 1573, 35 USPQ2d 1840, 1841 (Fed.Cir.1995). When a party moves for summary judgment of res judicata or other basis of preclusion, it must be shown that the claim or issue would be precluded even on the non-movant's version of the case. See generally Festo Corp., 72 F.3d at 860, 37 USPQ2d at 1162; Kearns v. General Motors Corp., 94 F.3d 1553, 1555-56, 39 USPQ2d 1949, 1951 (Fed.Cir.1996).

BACKGROUND

Erythropoietin (EPO) is a hormone that is used in treatment of anemia, renal failure, and other conditions associated with low levels of production of red blood cells. It is produced in minute quantities in the human body, and was obtained by Genetics Institute from the urine of persons with aplastic anemia. This product is called uEPO. Amgen synthetically produced EPO using recombinant DNA technology. This product is called rEPO. The separation and purification of uEPO as well as the production of rEPO are complex and difficult procedures, evolving over many years of scientific research. This history is summarized in Amgen II and in somewhat greater detail by the district court in Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 13 USPQ2d 1737 (D.Mass.1989) (Amgen I ).

The purity of a complex protein is described by its homogeneity, that is, the degree to which the desired protein is free of undesired proteins and other contaminants. Homogeneity may be measured by reverse phase high performance liquid chromatography (RP-HPLC), wherein movement of the composition as a single peak is an indicator of a substantially pure product.

Another indicator of purity is the specific activity of the protein composition. Specific activity measures the biological potency of the protein, and is expressed as international units (IU) of potency per absorbance unit (AU) of the composition. The AU for EPO has been established as the amount of light that is absorbed by the composition under designated conditions at a wavelength of 280 nanometers. The higher the specific activity of the sample, the fewer impurities in the composition. See Amgen I, 13 USPQ2d at 1754-58.

Amgen I and Amgen II were concerned with Genetics Institute's '195 patent, which claimed homogeneous EPO characterized by its molecular weight, RP-HPLC performance, and specific activity. The relevant '195 patent claims were as follows:

1. Homogeneous erythropoietin characterized by a molecular weight of about 34,000 daltons on SDS PAGE, movement as a single peak on reverse phase high performance liquid chromatography and a specific activity of at least 160,000 IU per absorbance unit at 280 nanometers.

3. A pharmaceutical composition for the treatment of anemia comprising a therapeutically effective amount of the homogeneous erythropoietin of claim 1 in a pharmaceutically acceptable vehicle.

This court concluded in Amgen II that the '195 specification did not enable EPO having a specific activity of at least 160,000 IU/AU. The court held, reversing Amgen I, that the patent "fails to enable purification of either rEPO or uEPO." Amgen II, 927 F.2d at 1217, 18 USPQ2d at 1030.

Genetics Institute had initially sought to claim homogeneous EPO without limitation to the specific activity of the product. After the decision in Amgen II Genetics Institute proceeded with prosecution of a continuation 1. A pharmaceutical composition for stimulating production of red blood cells comprising a therapeutically effective amount of homogeneous human EPO protein characterized by a molecular weight of about 34,000 daltons in a single band on SDS PAGE and movement as a single peak in reverse phase high performance liquid chromatography and a pharmaceutically acceptable vehicle.

                of the '195 patent, presenting for examination claims without a specific activity limitation, duly directing the examiner's attention to the decision in Amgen II.   This continuation application led to grant of the '837 patent.  Genetics Institute states that it always viewed its invention as homogeneous EPO unlimited by any numerical specific activity, and that the '837 specification and claims are to this effect.  Claim 1 is representative
                

After the '837 patent issued, Genetics Institute again sued Amgen for infringement.

Amgen moved for summary judgment on the ground that Genetics Institute is barred by the doctrine of res judicata, claim preclusion, or issue preclusion, from bringing this infringement action against Amgen or its privies. The district court agreed, holding that "Genetics is bound by the prior determination that the '195 patent specification does not enable the making of homogeneous EPO, and thus may not assert the virtually identical claims of the '837 patent against Amgen's homogeneous rEPO product.'' This appeal followed.

DISCUSSION

A final judgment on the merits bars relitigation of the same cause between the same parties. Brown v. Felsen, 442 U.S. 127, 131, 99 S.Ct. 2205, 2209, 60 L.Ed.2d 767 (1979); Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5, 99 S.Ct. 645, 649 n. 5, 58 L.Ed.2d 552 (1979). Thus, a claim that was litigated and decided on its merits can not be presented in a...