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Amgen Inc. v. Amneal Pharmaceuticals LLC

United States District Court, D. Delaware

July 26, 2018

AMGEN INC., Plaintiff,
v.
AMNEAL PHARMACEUTICALS LLC, et al., Defendants.

          Jack B. Blumenfeld, Esquire and Maryellen Noreika, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Plaintiff Amgen Inc. Of Counsel: Frederick C. Millett, Esquire and Rosanna W. Gan, Esquire of Fitzpatrick, Cella, Harper & Scinto, New York, New York, and Kathryn E. Easterling, Esquire of Fitzpatrick, Cella, Harper & Scinto, Washington, D.C.

          David E. Moore, Esquire, Alan R. Silverstein, Esquire, Bindu A. Palapura, Esquire, and Stephanie O'Byrne of Potter, Anderson & Corroon, LLP, Wilmington, Delaware. Counsel for Defendants Amneal Pharmaceuticals LLC and Amneal Pharmaceuticals of New York LLC. Of Counsel: Jake M. Holdreith, Esquire and Kelsey J. Thorkelson, Esquire of Robins Kaplan LLP, Minneapolis, Minnesota, Oren D. Langer, Esquire of Robins Kaplan LLP, New York, New York.

          John C. Phillips, Jr., Esquire and David A. Bilson, Esquire of Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware. Counsel for Defendant Piramal Healthcare UK Ltd. Of Counsel: Aaron F. Barkoff, Esquire, Alejandro Menchaca, Esquire, and Rajendra A. Chiplunkar, Esquire of McAndrews Held & Malloy Ltd., Chicago, Illinois.

          John W. Shaw, Esquire, Karen E. Keller, Esquire, and David M. Fry, Esquire of Shaw Keller LLP, Wilmington, Delaware. Counsel for Defendants Watson Laboratories, Inc., Actavis, Inc., and Actavis Pharma, Inc. Of Counsel: Christopher B. Essig, Esquire, George C. Lombardi, Esquire, Elizabeth E. Grden, Esquire, and Zachary L. Sorman, Esquire of Winston & Strawn LLP, Chicago, Illinois.

          John C. Phillips, Jr., Esquire and David A. Bilson, Esquire of Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware. Counsel for Defendants Zydus Pharmaceuticals (USA) Inc. and Cadila Healthcare Ltd. (d.b.a. Zydus Cadila). Of Counsel: William D. Hare, Esquire and Renita S. Rathinam, Esquire of McNeely, Hare & War LLP, Washington, D.C., and Christopher S. Casieri, Esquire of McNeely, Hare & War LLP, Princeton, New Jersey.

          OPINION

          GOLDBERG, M., District Judge.

         I. INTRODUCTION

         This is a consolidated patent infringement action arising under the Drug Price Competition and Patent Term Restoration Act of 1984, 21 U.S.C. § 355, also known as the Hatch-Waxman Act. United States Patent No. 9, 375, 405 (the “'405 patent”) is assigned to Plaintiff Amgen Inc. (“Amgen”) and listed in the Approved Drug Products with Therapeutic Equivalents (the “Orange Book”) as covering Sensipar®. Amgen accuses multiple Defendants of infringing the '405 patent by filing Abbreviated New Drug Applications (“ANDAs”) seeking FDA approval to manufacture, use and/or sell generic versions of Sensipar®. These Defendants are Amneal Pharmaceuticals LLC and Amneal Pharmaceuticals of New York LLC (collectively, “Amneal”), Piramal Healthcare UK Ltd. (“Piramal”), Watson Laboratories, Inc., Actavis, Inc., and Actavis Pharma, Inc. (collectively, “Watson”), and Zydus Pharmaceuticals (USA) Inc. and Cadila Healthcare Ltd. (collectively, “Zydus”).

         I bifurcated the infringement claims and invalidity counterclaims for trial, and held a four-day bench trial on infringement beginning on March 5, 2018. At the time of the pretrial conference, this case involved five additional defendants that have since entered into a consent judgment or stipulation of dismissal. (D.I. 316, D.I. 317, D.I. 320, D.I. 321, D.I. 348). Of those five defendants, only one participated at trial: Aurobindo Pharma USA Inc. and Aurobindo Pharma USA, Inc., known collectively as “Aurobindo.” Presently before me are the parties' post-trial proposed findings of fact and conclusions of law concerning infringement of the '405 patent. (D.I. 359, D.I. 360, D.I. 366, D.I. 367). I have subject matter jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331 and 1338(a). Venue is proper in this court under 28 U.S.C. §§ 1391 and 1400(b).[1]

         II. BACKGROUND

         A. The '405 Patent

         The '405 patent, entitled “Rapid Dissolution Formulation of Calcium Receptor-Active Compound, ” was issued by the United States Patent and Trademark Office (“Patent Office”) on June 28, 2016. (D.I. 293, Ex. 1 at ¶ 5). The patent issued from U.S. Patent Application No. 12/942, 646 (the “'646 application”), filed on November 9, 2010, and claims priority to U.S. Provisional Patent Application No. 60/502, 219, filed on September 12, 2003. (Id. at ¶¶ 7, 8). The '405 patent has two independent claims (claims 1 and 20) and twenty-one dependent claims. (JTX 2 at 13:18-15:3).

         For most of the asserted claims, the parties' stipulated that a finding of infringement would depend on the findings for claim 1 of the '405 patent. (See D.I. 336). Claim 1 recites a pharmaceutical composition combining specific excipients in specific amounts with the active ingredient cinacalcet hydrochloride (“cinacalcet HCI”). Excipients are the inert ingredients used in drug formulations to perform specific functions, such as diluent, binder, or disintegrant. (JTX 11 at 2545). Diluents provide bulk to the formulation so that the tablets are of sufficient size for handling. (PTX 454 at 404; D.I. 356 at 946:13-19). Binders act as the adhesive that holds the drug and excipients together. (D.I. 353 at 186:8-20). Disintegrants ensure the breakup of the tablet upon ingestion thereby promoting absorption of the drug substance. (JTX 11 at 2545; PTX 447 at 105). With that background in mind, claim 1 of the '405 patent specifically states:

         A pharmaceutical composition comprising:

(a) from about 10% to about 40% by weight of cinacalcet HCl in an amount of from about 20 mg to about 100 mg;
(b) from about 45% to about 85% by weight of a diluent selected from the group consisting of microcrystalline cellulose, starch, dicalcium phosphate, lactose, sorbitol, mannitol, sucrose, methyl dextrins, and mixtures thereof;
(c) from about 1% to about 5% by weight of at least one binder selected from the group consisting of povidone, hydroxypropyl methylcellulose, hydroxypropyl cellulose, sodium carboxymethylcellulose, and mixtures thereof; and
(d) from about 1% to 10% by weight of at least one disintegrant selected from the group consisting of crospovidine (sic), sodium starch glycolate, croscarmellose sodium, and mixtures thereof; wherein the percentage by weight is relative to the total weight of the composition, and wherein the composition is for the treatment of at least one of hyperparathyroidism, hyperphosphonia, hypercalcemia, and elevated calcium phosphorus product.

(JTX 2 at 13:18-39).

         For reasons unknown to me, the parties' stipulation did not cover three of the dependent claims Amgen has asserted against various defendants. Those are claims 5, 6, and 18. Claim 5 recites, “The composition according to claim 1, wherein the at least one binder is povidone.” (JTX 2 at 13:53-54). Claim 6 recites, “The composition according to claim 1, wherein the at least one disintegrant is crospovidone.” (Id. at 13:55-56). Claim 18 recites, “The composition according to claim 1, wherein the hyperparathyroidism is primary hyperparathyroidism or secondary hyperparathyroidism.” (Id. at 14:23-24).

         B. Person of Ordinary Skill in the Art (“POSA”)

         The parties' definitions of a POSA do not meaningfully differ. (See, e.g., D.I. 356 at 907:1-8; D.I. 353 at 183:5-16). A POSA should have an advanced degree with a M.S. or Ph.D. in chemistry, pharmacy and/or pharmacology or a related field, as well as work experience in drug dosage and formulations. (D.I. 356 at 939:17-940:4; accord D.I. 353 at 182:10-183:4).

         C. Prosecution of the '405 Patent

         1. The Original Claim

         The '646 application was a continuation of U.S. Patent Application No. 10/937, 870 (the “'870 application”). As originally-filed by Amgen, the '646 application contained one broad claim. (JTX 5 at SENS-AMG 47; D.I. 355 at 621:23-622:14). Claim 1 covered a “pharmaceutical composition comprising an effective dosage amount of a calcium receptor active compound and at least one pharmaceutically acceptable excipient.” The claim further stated that the composition had a particular dissolution profile. (JTX 5 at SENS-AMG 47). But the dissolution profile has not been relevant in this litigation, except to note that the inventive feature of the '405 patent was a “rapid” dissolution profile for a poorly soluble drug. (Id. at SENS-AMG 520).

         2. The 2011 Preliminary Amendment

         Before the Patent Office took formal action on the original claim, Amgen filed a preliminary amendment on November 15, 2011 (the “2011 Preliminary Amendment”) cancelling claim 1 and adding new claims 2 through 24. (JTX 5 at SENS-AMG 257-62). Claim 2 narrowed the scope of the claims by requiring specific amounts of three specific types of excipient—diluents, binders, and disintegrants—and further requiring that the diluent be selected from a Markush group. (Id.; D.I. 354 at 393:16-20). A Markush group “lists alternative species or elements that can be selected as part of the claimed invention.” Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 (Fed. Cir. 2016). It is typically expressed in the form: “a member selected from the group consisting of A, B and C.” Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003). New independent claim 2 read:

         A pharmaceutical composition comprising:

(a) from about 10% to about 40% by weight of cinacalcet HCl;
(b) from about 45% to about 85% by weight of a diluent selected from the group consisting of microcrystalline cellulose, starch, dicalcium phosphate, lactose, sorbitol, mannitol, sucrose, methyl dextrins, and mixtures thereof,
(c) from about 1% to about 5% by weight of at least one binder; and
(d) from about 1% to 10% by weight of at least one disintegrant, wherein the percentage by weight is relative to the total weight of the composition.

(JTX 5 at SENS-AMG 258). Claims 3 through 23 were dependent on claim 2; claim 24 was the same as claim 2 except without the Markush group. (Id.).

         On September 16, 2014, the Patent Office issued a non-final Office Action rejecting claims 2 through 24 as obvious “over Van Wagenen (US 6, 211, 244 B1) as evidenced by Kajiyama et al. (US 6, 656, 492), in view of Creekmore (US 6, 316, 460 B1) and Hsu et al. (US 2005/0147670).” (JTX 5 at SENS-AMG 291-97). As the Examiner explained, Van Wagenen discloses compounds that “read on cinacalcet HCl” and “can be used to treat diseases such as primary hyperparathyroidism and secondary hyperparathyroidism.” (Id. at SENS-AMG 293-94). Hsu discloses pharmaceutical formulations where eleven specific binders—including starch and all four binders in claim 1 of the '405 patent—may be present in an amount from about 1% to about 80% by weight. (Id.; PTX 11 at ¶¶ 17, 46). Hsu also discloses twelve specific disintegrants—including all three disintegrants in claim 1 of the '405 patent—that may be present in an amount of about 0.1% to about 10% by weight. (JTX 5 at SENS-AMG 293-97; PTX 11 at ¶ 51). Creekmore discloses pharmaceutical formulations where nineteen binders— including starch, pregelatinized starch, and three of the four binders in claim 1 of the '405 patent—may be present in an amount of 2% to 90% by weight. (JTX 5 at SENS-AMG 295; PTX 7 at 2:32-43). Creekmore also discloses that eight disintegrants—including all three disintegrants in claim 1 of the '405 patent—may be present in an amount of about 2% to 10%. (JTX 5 at SENS-AMG 295; PTX 7 at col. 2-3).

         3. The 2014 Amendment

         On December 15, 2014, Amgen responded to the September 16, 2014 Office Action by filing an amendment (the “2014 Amendment”) that narrowed the claims. (D.I. 354 at 394:20-395:1). Amgen amended independent claim 2 to add that the cinacalcet HCl must be present “in an amount of from about 20 mg to about 100 mg.” (JTX 5 at SENS-AMG 308-318). Amgen argued to the Patent Office that the 2014 Amendment overcame the prior art references cited in the Office Action by adding a precise amount of cinacalcet HCI. (Id. at SENS-AMG 313-319).

         4. The Examiner's Amendment

         The Examiner did not allow the 2014 Amendment. (D.I. 354 at 398:2-7). Instead, on March 12, 2015, the Examiner had an interview with Amgen's counsel and proposed an Examiner's Amendment that further narrowed the claims. (JTX 5 at SENS-AMG 340). The Examiner's Amendment canceled dependent claims 6, 8, and 22 and imported those limitations into independent claim 2 (which later issued as claim 1). (Id. at SENS-AMG 333-338). Original claim 6 stated, “The composition according to claim 1, wherein the at least one binder is selected from the group consisting of povidone, hydroxypropyl methylcellulose, hydroxypropyl cellulose, sodium carboxymethylcellulose, and mixtures thereof.” (Id. at SENS-AMG 310). Original claim 8 stated, “The composition according to claim 1, wherein the at least one disintegrant is selected from the group consisting of crospovidine (sic), sodium starch glycolate, croscarmellose sodium, and mixtures thereof.” (Id.). Original claim 22 was a treatment limitation. Thus, as proposed by the Examiner, amended claim 2 now read: A pharmaceutical composition comprising:

(a) from about 10% to about 40% by weight of cinacalcet HCl in an amount of from about 20 mg to about 100 mg;
(b) from about 45% to about 85% by weight of a diluent selected from the group consisting of microcrystalline cellulose, starch, dicalcium phosphate, lactose, sorbitol, mannitol, sucrose, methyl dextrins, and mixtures thereof,
(c) from about 1% to about 5% by weight of at least one binder selected from the group consisting of povidone, hydroxypropyl methylcellulose, hydroxypropyl cellulose, sodium carboxymethylcellulose, and mixtures thereof; and
(d) from about 1% to 10% by weight of at least one disintegrant selected from the group consisting of crospovidine, sodium starch glycolate, croscarmellose sodium, and mixtures thereof,
wherein the percentage by weight is relative to the total weight of the composition, and wherein the composition is for the treatment of at least one of hyperparathyroidism, hyperphosphonia, hypercalcemia, and elevated calcium phosphorus product.

(Id. at SENS-AMG 333-34 (underlining Examiner's amendments)).

         After Amgen agreed to the Examiner's Amendment, the Examiner found that the pending claims overcame the obviousness rejection. (JTX 5 at SENS-AMG 338). Thus, on March 25, 2015, the Patent Office issued a Notice of Allowance with three attachments: the Examiner-Initiated Interview Summary, the Examiner's Amendment, and the Examiner's Statement of Reasons for Allowance. (Id. at SENS-AMG 332). The Examiner's reasons for allowance stated:

The closet [sic] prior art was that which was cited in the previous office action filed on 09/16/2014, but fails to specifically disclose or render obvious the combination of components and in the amounts thereof set forth in claim 2.
The claimed subject matter is not taught or suggested by the cited reference and thus, the claimed subject matter are [sic] considered to be novel and patentably distinct over the prior art of the record.

(Id. at 338). Although there was additional prosecution after this first notice of allowance, the claims ultimately issued in the same form. Independent claims 2, 24, and 26 from the patent application issued as independent claims 1, 20, and 21, respectively. (Id.).

         5. Additional Prosecution and Issuance of the ...


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