Reckitt Benckiser Pharmaceuticals Inc. et al v. Watson Laboratories Inc. et al

Filing 446

TRIAL OPINION. Reckitt is directed to submit an agreed-upon form of final judgment within two weeks. Signed by Judge Richard G. Andrews on 6/3/2016. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

RECKITT BENCKISER
PHARMACEUTICALS INC., RB
PHARMACEUTICALS LIMITED, and
MONOSOL RX, LLC,
Civil Action No. 13-1674-RGA

Plaintiffs,
v.
WATSON LABORATORIES, INC. and
ACTAVIS LABORATORIES UT, INC.,
Defendants.

RECKITT BENCKISER
PHARMACEUTICALS INC., RB
PHARMACEUTICALS LIMITED, and
MONOSOL RX, LLC,
Plaintiffs,
v.

Civil Action No. 14-422-RGA

PAR PHARMACEUTICAL, INC. and
INTELGENX TECHNOLOGIES CORP.,
Defendants.

TRIAL OPINION
Mary W. Bourke, Esq., Dana K. Severance, Esq., Daniel M. Attaway, Esq., WOMBLE
CARLYLE SANDRIDGE & RICE, LLP, Wilmington, DE, attorneys for Plaintiffs.
Daniel A. Ladow, Esq., James M. Bollinger, Esq., Timothy P. Heaton, Esq., J. Magnus Essunger,
Esq., TROUTMAN SANDERS LLP, New York, NY; Charanjit Brahma, Esq., TROUTMAN

SANDERS LLP, San Francisco, CA; Robert E. Browne, Jr., Esq., TROUTMAN SANDERS
LLP, Chicago, IL; Puja Patel Lea, Esq., TROUTMAN SANDERS LLP, Atlanta, GA; Jeffrey B.
Elikan, Esq., Jeffr~y Lerner, Esq., Erica N. Andersen, Esq., Ashley M. Kwon, Esq.,
COVINGTON & BURLING LLP, Washington, DC, attorneys for Plaintiffs Reckitt Benckiser
Pharmaceuticals Inc. and RB Pharmaceuticals Limited.
James F. Hibey, Esq., Timothy C. Bickham, Esq., STEPTOE & JOHNSON LLP, Washington,
DC; David L. Hecht, Esq., Cassandra A. Adams, Esq., STEPTOE & JOHNSON LLP, New
York, NY, attorneys for Plaintiff MonoSol Rx, LLC.
John C. Phillips, Jr., Esq., Megan C. Haney, Esq., PHILLIPS, GOLDMAN & SPENCE, P.A.,
Wilmington, DE; George C. Lombardi, Esq., Michael K. Nutter, Esq., Tyler G. Johannes, Esq.,
WINSTON & STRAWN LLP, Chicago, IL; Stephen Smerek, Esq., David P. Dalke, .Esq., Ashlea
P. Raymond, Esq., WINSTON & STRAWN LLP, Los Angeles, CA; MelindaK. Lackey, Esq.,
Donald Mahoney, III, Esq., WINSTON & STRAWN LLP, Houston, TX, attorneys for
Defendants Watson Laboratories, Inc. and Actavis Laboratories UT, Inc.
Steven J. Fineman, Esq., Katharine Lester Mowery, Esq., RICHARDS, LAYTON & FINGER,
P.A., Wilmington, DE; Daniel G. Brown, Esq., LATHAM & WATKINS LLP, New York, NY;
James K. Lynch, Esq., LATHAM & WATKINS LLP, San Francisco, CA; Terry Kearney, Esq.,
LATHAM & WATKINS LLP, Menlo Park, CA; Jennifer Koh, Esq., B.. Thomas Watson, Esq.,
LATHAM & WATKINS LLP, San Diego, CA; Emily C. Melvin, Esq., Brenda L. Danek, Esq.,
LATHAM & WATKINS LLP, Chicago, IL, attorneys for Defendants Par Pharmaceutical, Inc.
and IntelGenx Technologies Corp.

JuneJ__, 2016

2

Plaintiffs Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and
MonoSol Rx, LLC (collectively, "Reckitt") brought this suit against Defendants Watson
Laboratories, Inc. and Actavis Laboratories UT, Inc. (collectively, "Watson") (D.I. 1, 11, 287) 1
and Defendants Par Pharmaceutical, Inc. and IntelGenx Technologies Corporation (collectively,
"Par") (C.A. No. 14-422 D.I. 1, 9, 14; D.I. 80) alleging infringement of U.S. Patent Nos.
8,475,832 (''the '832 patent"); 8,603,514 ("the '514 patent"); and 8,017,150 (''the '150 patent");
Reckitt' s suits against Watson and Par were consolidated for all pretrial proceedings. (D .I. 66;
C.A. No. 14-422 D.I. 19). The Court held a four day bench trial. (D.I. 414, 415, 416, 417). 2 On
November 3-4, 2015, the parties addressed the validity of the '150 and '514 patents and
infringement of the '150 patent by Watson (D.I. 414, 415). On December 17-18, 2015, the
parties addressed the validity of the '832 patent, infringement of the' 150 patent by Par, and
infringement of the '832 and '514 patents by Watson and Par (D.I. 416, 417). The parties filed
-post-trial briefing (D.I. 396, 397, 406, 407, 408, 410, 411) and proposed findings of fact (D.I.
400). 3 Having considered the documentary evidence and testimony, the Court makes the
following findings of fact and conclusions oflaw pursuant to Federal Rule of Civil Procedure
52(a).

1

Citations to "D.I.
"are to the docket in C.A. No. 13-1674 unless otherwise noted.
Although the official transcript is filed in four parts (D.I. 414, 415, 416, 417), citations to the transcript herein are
generally cited as "Tr."
3
Reckitt also submitted a notice of supplemental authority on March 28, 2016 (D.I. 424), informing the Court of the
final written decisions of the Patent Trial and Appeal Board in inter partes review proceedings of a patent related to
the '514 patent.

2

3

I.

BACKGROUND
A.

Overview

Plaintiff Reckitt Benckiser Pharmaceuticals is the holder of approved New Drug
Application ("NDA") No. 22-410 for Suboxone® sublingual film, which is indicated for
maintenance treatment of opioid dependence. (D.I. 353-1 at if'il 10, 16). The active ingredients
of Suboxone® sublingual film are buprenorphine hydrochloride and naloxone hydrochloride.

(Id. at if 17). Buprenorphine is an opioid. (Tr. 1292:7-11; DFF137). 4 Naloxone is an opioid
antagonist that prevents the action of opioids like buprenorphine when delivered simultaneously
I

to the bloodstream of a user. (Tr. 1293:3-17, 1474:9-14). Suboxone® sublingual film includes
both buprenorphine and naloxone to prevent unintended diversion of the product for abuse. (Tr.
1474:9-14).
Suboxone® sublingual film is available in four dosage strengths (buprenorphine
hydrochloride/naloxone hydrochloride): 2 mg/0.5 mg, 4 mg/1 mg, 8 mg/2 mg, and 12 mg/3 mg.
(D.I. 353-1 at if 17). Plaintiff RB Pharmaceuticals Limited is the assignee of the '832 patent,
entitled "Sublingual and Buccal Film Compositions." (Id. atif 24; '832 patent, (54) & (73)).
PlaintiffMonoSol Rx, LLC is the assignee of the '514 patent, entitled "Uniform Films for Rapid
Dissolve Dosage Form Incorporating Taste-Masking Compositions," and the '150 patent,
entitled "Polyethylene Oxide-Based Films and Drug Delivery Systems Made Therefrom." (D.I.
353-1 at ifil 28, 32; '514 patent, (54) & (73); '150 patent, (54) & (73)). Plaintiff Reckitt
Benckiser Pharmaceuticals is an exclusive licensee of the '832, '514, and '150 patents. (D.I.
353-1 at ifil 25, 29, 33). The '832, '514, and '150 patents are listed in the Food and Drug

4

Citations to "PFF," "DFF," "DPRF," and "DWRF" herein are to the Corrected Joint Proposed Findings of Fact and
related responses filed at D.I. 400.

4

Administration's "Approved Drug Products with Therapeutic Equivalence Evaluations" (the
"Orange Book") entry for Suboxone® sublingual film. (Id. at if 34).
Watson and Par each filed Abbreviated New Drug Applications ("ANDAs") seeking
FDA approval to market generic versions of the 2 mg/0.5 mg, 4 mg/1 mg, 8 mg/2 mg, and 12
mg/3 mg dosage strengths of Suboxone® sub lingual film prior to the expiration of the '832,
'514, and '150 patents. (Id. at iii! 42, 45, 118). Watson seeks approval for its ANDA Product
through ANDA Nos. 204383 and 207087. 5 (Id. atifif 43, 45). Par seeks approval for its ANDA
Product through ANDA No. 205854. (Id. at if 118). Watson's ANDAs and Par's ANDA contain
Paragraph IV certifications alleging that the '832, '514, and '150 patents are invalid,
unenforceable, and/or will not be infringed by the manufacture, use, or sale of the generic
products proposed in the ANDAs. (Id. at iii! 43, 44, 46, 119). Reckitt received notices of
Watson's and Par's Paragraph IV certifications and initiated the present litigation. (Id.; D.I. 1,
11, 80, 287).
B.

Asserted Patents

I.

'832 Patent

The '832 patent is directed to pharmaceutical film compositions and formulations that
contain buprenorphine and naloxone. ('832 patent, 23:58-25:6). Reckitt asserts independent
claims 1 and 15 and dependent claims 3, 6, and 16-19 against Watson and Par. (PFF21). The
'832 patent issued on July 2, 2013. ('832 patent, (45)). The asserted claims of the '832 patent
are entitled to a priority date of August 7, 2009. (D.I. 353-1 at if 120).
Claim 1 of the '832 patent reads:
A film dosage composition comprising:
5

"Watson's ANDA Product" and "Par's ANDA Product" refer to the parties' respective proposed generic drug
formulations.

5

a. A polymeric carrier matrix;
b. A therapeutically effective amount of buprenorphine or a pharmaceutically
acceptable salt thereof;
c. A therapeutically effective amount of naloxone or a pharmaceutically acceptable
salt thereof; and
d. A buffer in an amount to provide a local pH for said composition of a value
sufficient to optimize absorption of said buprenorphine, wherein said local pH is
from about 3 to about 3 .5 in the presence of saliva.
('832 patent, 23:58-67).
Claim 15 of the '832 patent reads:
An orally dissolving film formulation comprising buprenorphine and naloxone,
wherein said formulation provides an in vivo plasma profile having a Cmax of
between about 0.624 ng/ml and about 5.638 ng/ml for buprenorphine and an in vivo
plasma profile having a Cmax of between about 41.04 pg/ml to about 323. 75 pg/ml
for naloxone.

(Id. at 24:56-61).

2.

'514 Patent

The '514 patent is directed to pharmaceutical film compositions that achieve certain
levels of active ingredient content uniformity. ('514 patent, (57)). Reckitt asserts independent
claim 62 and dependent claims 64, 65, 69, and 73 against Watson and Par. (PFF19). The '514
patent issued on December 10, 2013. ('514 patent, (45)). The asserted claims of the '514 patent
are entitled to a priority date of September 27, 2002. (D.I. 353-1 at if 121).
Claim 62 of the '514 patent reads:
A drug delivery composition comprising:
(i) a cast film comprising a flowable water-soluble or water swellable film-forming
matrix comprising one or more substantially water soluble or water swellable
polymers; and a desired amount of at least one active;
wherein said matrix has a viscosity sufficient to aid in substantially maintaining
non-self-aggregating uniformity of the active in the matrix;
6

(ii) a particulate active substantially uniformly stationed in the matrix; and
(iii) a taste-masking agent selected from the group consisting of flavors, sweeteners,
flavor enhancers, and combinations thereof to provide taste-masking of the active;
wherein the particulate active has a particle size of 200 microns or less and said
flowable water-soluble or water swellable film-forming matrix is capable of being
dried without loss of substantial uniformity in the stationing of said particulate
active therein; and
wherein the uniformity subsequent to casting and drying of the matrix is measured
by substantially equally sized individual unit doses which do not vary by more than
10% of said desired amount of said at least one active.
('514 patent, 73:48-74:10).

3.

'150Patent

The '150 patent is directed to pharmaceutical film products comprising, among other
things, certain amounts of specific polymers, including polyethylene oxides. (' 150 patent, (57)).
Reckitt asserts independent claim I and dependent claim 4 against Watson. (PFF23). Reckitt
asserts independent claim 10 and dependent claim 13 against Par. (PFF25). The '150 patent
issued on September 13, 2011. (' 150 patent, (45)). The parties stipulated that, for purposes of
the present case, the asserted claims of the '150 patent are entitled to a priority date no earlier
than May 28, 2003. (D.I. 353-1 at ii 122).
Claim 1 of the '150 patent reads:
A mucosally-adhesive water-soluble film product comprising:
an analgesic opiate pharmaceutical active; and
at least one water-soluble polymer component consisting of polyethylene oxide in
combination with a hydrophilic cellulosic polymer;
wherein:
the water-soluble polymer component comprises greater than 75% polyethylene
oxide and up to 25% hydrophilic cellulosic polymer;
7

the polyethylene oxide comprises one or more low molecular weight polyethylene
oxides and one or more higher molecular weight polyethylene oxides, the molecular
weight of the low molecular weight polyethylene oxide being in the range 100,000
to 300,000 and the molecular weight of the higher molecular weight polyethylene
oxide being in the range 600,000 to 900,000; and
the polyethylene oxide of low molecular weight comprises about 60% or more in
the polymer component.
('150 patent, 57:36-54).
Claim 10 of the' 150 patent reads:
A mucosally-adhesive water-soluble film product comprising:
an analgesic opiate pharmaceutical active; and
at least one water-soluble polymer component consisting of polyethylene oxide in
combination with a hydrophilic cellulosic polymer;
wherein:
the water-soluble polymer component comprises the hydrophilic cellulosic polymer
in a ratio of up to about 4: 1 with the polyethylene oxide;.
the polyethylene oxide comprises one or more low molecular weight polyethylene
oxides and one or more higher molecular weight polyethylene oxides, the molecular
weight of the low molecular weight polyethylene oxide being in the range 100,000
to 300,000 and the molecular weight of the higher molecular weight polyethylene
oxide being in the range 600,000 to 900,000; and
the polyethylene oxide of low molecular weight comprises about 60% or more in
the polymer component.
(Id. at 58:28-46).

II.

LEGAL STANDARDS
A.

Infringement

A patent is infringed when a person "without authority makes, uses, offers to sell, or sells
any patented invention, within the United States ... during the term of the patent .... " 35

8

U.S.C. § 271(a). A two-step analysis is employed in making an infringement determination. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), afj"d, 517
U.S. 370 (1996). First, the court must construe the asserted claims to ascertain their meaning and
scope. See id. The trier of fact must then compare the properly construed claims with the
accused infringing product. See id. This second step is a question of fact. Bai v. L & L Wings,
Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
"Literal infringement of a claim exists when every limitation recited in the claim is found
in the accused device." Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If
any claim limitation is absent from the accused device, there is no literal infringement as a matter
oflaw." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an
accused product does not infringe an independent claim, it also does not infringe any claim
depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir.
1989). However, "[o]ne may infringe an independent claim and not infringe a claim dependent
on that claim." Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, ·1359 (Fed. Cir. 2007)
(internal quotation marks omitted). A product that does not literally infringe a patent claim may
still infringe under the doctrine of equivalents if the differences between an individual limitation
of the claimed invention and an element of the accused product are insubstantial. See WarnerJenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39-40 (1997). The patent owner has the
burden of proving infringement by a preponderance of the evidence. See SmithKline
Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878, 889 (Fed. Cir. 1988).
B.

Anticipation

A patent claim is invalid as anticipated under 35 U.S.C. § 102 if"within the four comers
of a single, prior art document ... every element of the claimed invention [is described], either

9

expressly or inherently, such that a person of ordinary skill in the art could practice the invention
without undue experimentation." Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed.
Cir. 2009) (alterations in original) (internal quotation marks omitted). As with infringement, the
court construes the claims and compares them against the prior art. See Enzo Biochem, Inc. v.
Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). "[T]he accused infringer must show by

clear and convincing evidence that a single prior art reference discloses each and every element
of a claimed invention." Silicon Graphics, Inc. v. AT! Techs., Inc., 607 F.3d 784, 796 (Fed. Cir.
. 2010). "A claimed invention cannot be anticipated by a prior art reference ifthe allegedly
anticipatory disclosures cited as prior art are not enabled .... [A disclosure] is not truly prior art[]
if that disclosure fails to enable one of skill in the art to reduce the disclosed invention to
practice." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003).
"Enablement is a question oflaw." Id. at 1334. Disclosures in prior art patents are
presumptively enabled absent persuasive contrary evidence. Id. at 1355. "[T]he burden still
rests on the party asserting invalidity to ultimately demonstrate by clear and convincing evidence
that the prior art is enabled." Forest Labs., Inc. v. Ivax Pharm., Inc., 438 F. Supp. 2d 479, 487
n.3 (D. Del. 2006), aff'd, 501 F.3d 1263 (Fed. Cir. 2007).
C.

Obviousness

A patent claim is invalid as obvious under 35 U.S.C. § 103 "ifthe differences between
the subject matter sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains." 35 U.S.C. § 103; see also KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 406-07 (2007). "Under§ 103, the scope and content of the prior art

are to be determined; differences between the prior art and the claims at issue are to be

10

ascertained; and the level of ordinary skill in the pertinent art resolved." KSR, 550 U.S. at 406
(citations and internal quotation marks omitted).
A coUrt is required to consider secondary considerations, or objective indicia of
nonobviousness, before reaching an obviousness determination, as a "check against hindsight
bias." See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676
F.3d 1063, 1078-79 (Fed. Cir. 2012). Relevant secondary considerations include commercial
success, long felt but unsolved needs, failure of others, praise, unexpected results, and copying,
among others. Graham v. John Deere Co. ofKansas City, 383 U.S. 1, 17-18 (1966); Ruiz v. A.B.

Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000); Tex. Instruments, Inc. v. U.S. Int'l Trade
Comm 'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993).
D.

Indefiniteness

All valid patents must "conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C.
§ 112, ·ir 2. The principal justification for the definiteness requirement "is to ensure that the
claims are written in such a way that they give notice to the public of the extent of the legal
protection afforded by the patent, so that interested members of the public, e.g._, competitors of
the patent owner, can determine whether or not they infringe." All Dental Prodx, LLC v.

Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002); see also Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). "[A] patent is invalid for indefiniteness
if its claims, read in light of the specification delineating the patent, and the prosecution history,
fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."

Nautilus, Inc., 134 S. Ct. at 2124. "Where it would be apparent to one of skill in the art, based
on the specification, that the invention set forth in a claim is not what the patentee regarded as

11

·'

his invention, [a court] must hold that claim invalid under§ 112, paragraph 2." Allen Eng'g

·Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002). Indefiniteness is a legal
question. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed. Cir. 2007).

III.

'832 PATENT
A.

Validity
I.

Findings ofFact

1. A person of ordinary skill in the art with respect to the '832 patent would have a bachelor's
degree in pharmaceutical science, chemistry, or a related field, and two to five years of relevant
experience in developing drug formulations. Alternatively, a person of ordinary skill in the art
could have a master's degree or Ph.D. and less practical experience. 6
2. The conditions under which local pH is measured can have demonstrable impacts on the
resulting pH values. The '832 patent does not disclose the volume of solvent that should be used
to measure local pH in in vitro dissolution tests, the type of solvent that should be used to
measure local pH in in vitro dissolution tests, or the time point at which local pH should be
measured in in vitro dissolution tests.
3. The following are prior art to the '832 patent: (1) the Suboxone® sublingual tablets; (2) PCT
Publication WO 2008/025791 to Euro-Celtique ("Euro-Celtique"); PCT Publication WO
2008/040534 to LabTec ("LabTec"); Cassidy et al., "Controlled buccal delivery of
buprenorphine," Journal of Controlled Release (1993) ("Cassidy"); and U.S. Patent Application
Publication No. 2005/0085440 to Birch ("Birch"). The European Medicines Agency Initial
Marketing-Authorisation Document, Scientific Discussion, Oct. 19, 2006 for Suboxone® tablets
("European Medicines Agency Document") is also prior art to the '832 patent.
4. Because the nasal and sublingual mucous membranes are structurally similar, a person of
skill in the art would expect that the teachings of Birch with respect to absorption of
buprenorphine across nasal mucosa at acidic pHs would also apply to absorption across
sublingual mucosa.
6

Although the parties' experts did not testify at trial as to descriptions of a person of ordinary skill in the art with
respect to the '832 patent, they did testify regarding the knowledge and motivations of such a person. No party
objected to testimony regarding the knowledge and motivations of a person of ordinary skill in the art on the ground
that the characteristics of such a person had not been established. I therefore take it that there was no dispute about
the characteristics of the person of ordinary skill in the art in the context of the '832 patent.
The characteristics of the person of ordinary skill in the art with respect to the '514 patent are undisputed. (See
DFF3 7, PFF466). The necessary qualifications in the context of the '514 patent were stated at trial at a level of
generality such that they do not seem to materially differ from those relevant to the '832 patent. (See Tr. 315:23316:5). Thus, the finding above is derived from testimony regarding the person of ordinary skill in the art in the
context of the '514 patent and, if it does not precisely represent the person of ordinary skill in the art with respect to
the '832 patent, it is sufficiently similar to permit resolution of the issues raised in the parties' post-trial briefing.

12

5. A person of ordinary skill in the art would have copied the buffer and pH of the Suboxone®
tablet in creating a film dosage form of buprenorphine and naloxone.
6. A person of ordinary skill in the art would have expected that the lower end of the operative
pH range of the Suboxone® tablet's sodium citrate and citric acid buffer would achieve the
targeted selective bioabsorption parameters for buprenorphine and naloxone.
7. Formulating a dosage form to achieve specific pharmacokinetic parameters was routine and
formulating orally dissolving films was known in the art before the priority date of the '832
patent.

2.

Conclusions ofLaw
a)

Indefiniteness

Defendants argue that claims 1, 3, and 6 of the '832 patent are invalid for indefiniteness
because the terms "local pH" and "optimized absorption" ofbuprenorphine have no standard
meaning and the '832 patent provides no guidance regarding how to determine those limitations
with reasonable certainty. (D.I. 396 at 20).
Defendants argue that the '832 patentees could have defined the claimed pH values as
those measured by dissolution testing, which was well known in the art. (Id. at 20). Instead, the
'832 patent claims "local pH" ranges, a term that was not well known in the art. (See, e.g., '832
patent, 23:64-67; see also Tr. 1363:8-18). Testimony at trial indicated that "local pH"
implicates complex dynamics and measurement techniques. (See Tr. 876:2-15, 962:15-964:7,
969:10-19, 1117:15-1118:17, 1364:9-22). Reckitt's expert Dr. Davies testified that "local pH"·
is equivalent to "microenvironmental pH," which was described in the prior art. (Tr. 1469: 14-1470:7; JTX47 at 1; JTX72 at 1). Defendants' expert Dr. Bley, on the other hand, testified that
the microenvironmental pH that Dr. Davies identified is not "local pH." (Tr. 1364:9-22).
Further, Defendants argue, the parties' attempts to measure local pH in this case demonstrate that
the patent lacks sufficient information to provide objective boundaries to the claim. (See D.I.
396 at 21). The pH measurements obtained by the experts in this case varied with conditions
13

including volume of solvent, type of solvent, and component concentration. (Tr. 876:7-15,
921:18-922:12, 962:15-964:7, 969:10-19; see DFF229-DFF230, DPRF73).
Reckitt maintains that the local pH limitation does not render claims 1, 3, and 6 indefinite
because the '832 patent expressly defines "local pH" and the Court adopted the definition in its
claim construction. (D.I. 406 at 24). According to Reckitt, the patent defines "local pH" to
mean "the pH of the region of the carrier matrix immediately surrounding the active agent as the
matrix hydrates and/or dissolves, for example, in the mouth of the user." ('832 patent, 3:35-38;
D.I. 406 at 24; PFF800; D.I. 156 at 11). Reckitt's expert Dr. Davies testified that a person of
skill in the art would understand that local pH is measured through an in vitro experiment
simulating in vivo conditions in the mouth, using a volume of water or simulated saliva that
approximates the amount of saliva to which a film would be exposed in the mouth. (Tr.
1470:19-1471 :7). Reckitt maintains that Dr. Davies' testimony is supported by the fact that
Defendants' expert Dr. Bley did in vitro measurements oflocal pH. (D.I. 406 at 24; Tr. 1471 :714; see also PTX183 at 28440 (IntelGenx lab notebook referring to in vitro pH testing as
"[m]easur[ing] pH [of] strips in the mouth using simulated saliva")). Reckitt also maintains that
Dr. Bley' s assertion that the term "local pH" is indefinite is inconsistent with his testimony that a
person of skill in the art would have recognized that the claimed local pH range was disclosed in
the prior art. (D.I. 406 at 24; see Tr. 1332:15-21).
The term "local pH" is indefinite. Reckitt cites the "microenvironmental pH" discussed
in prior art to show how a person of skill in the art would understand "local pH." (PFF801; see
Tr. 1469:23-1470:7; JTX47 at 1; JTX72 at 1). Aside from Dr. Davies' conclusory testimony
that "somebody of ordinary skill would know how to [dissolve], ... in a small volume of water
or simulated saliva so that they can predict or approximate in vivo local pH in the mouth,"

14

·'

Reckitt has not explained how microenvironmental pH correlates to the dissolution pH testing
that the experts have conducted in this case. (Tr. 1471:1-7). The testimony ofDrs. Davies,
Toste, Mcconville, and Michniak-Kohn makes clear that the particular conditions under which
pH is measured can have demonstrable impacts on the resulting pH values. (Tr. 921 :18-922:12,
969:15-970:6, 1117:15-1119:14, 1189:9-1191:6, 1195:3-17, 1280:21-1281 :3; JTX274 at 2-3;
see DFF230-DFF23 l ). Nowhere in the patent is there an explanation of the volume or type of
solvent to be used to measure local pH or at what point during dissolution the local pH is to be
measured. The parties' experts vigorously disagree regarding the appropriate conditions for
measuring local pH. (See Tr. 875:13-879:3, 921 :15-922:12;

976:12-9~8:10,

1114:15-1115:21,

1120:14-1122:22, 1191:21-1192:12, 1280:21-1281:3, JTX274 at 2-3; see also PFF196,
PFF284, DFF225).

In Akzo Nobel Coatings, Inc. v. Dow Chemical Co., the Federal Circuit affirmed the
district court's conclusion that "viscosity below 10 Pa.s" did not render claims indefinite
because, although the patent did not indicate the temperature at which viscosity was to be
measured, an expert declaration proved that "[t]he standard practice in analytical chemistry
dictates that if a temperature is not specified for a given measurement, room temperature is
implied." 811F.3d1334, 1344 (Fed. Cir. 2016). Here, there is no evidence as to a standard type
of solvent, volume of solvent, or time at which pH is to be measured. I therefore conclude that
the patent fails to provide persons of ordinary skill with information from which they could
determine the "local pH" of a formulation with reasonable certainty. Claims 1, 3, and 6 of the
'832 patent are indefinite and therefore invalid. 7

7 Defendants

also argue that claims 1, 3, and 6 are inde:flliite because a person of skill in the art would generally be
unable to determine whether any particular product meets the "sufficient to optimize absorption" limitation. (D.I.
396 at 21). The patent describes only a single example of"optimized absorption": absorption bioequivalent to the
Suboxone® tablet. ('832 patent, 3:15-21; D.I. 396 at 21). Defendants maintain, however, that nothing in the '832

15

b)

Anticipation and Obviousness

Defendants argue that claims 1, 3, and 6 of the '832 patent are invalid for obviousness.
(D.I. 396 at 10). Defendants argue that the '832 patent claims nothing more than films that are
bioequivalent to the prior-art Suboxone® sublingual tablets and that a person of skill in the art
would have copied the tablets' buffer system to make a film bioequivalent to the Suboxone®
tablets with a pH in the claimed range. (Id.). As· a result, Defendants argue, "the claimed
invention is the most routine of pharmaceutical industry tasks: mimicking the pharmacokinetics
of an existing product." (Id. at 9). Reckitt maintains that the claimed "buffer in an amount to
provide a local pH for said composition of a value sufficient to optimize absorption of said
buprenorphine, wherein said local pH is from about 3 to about 3.5 in the presence of saliva" is
inventive and would not have been obvious to persons of skill in the art. (See D.I. 406 at 19).
Defendants' obviousness argument focuses on five pieces of prior art: (1) the
Suboxone® sublingual tablets (JTX239, JTX240; DFF135); (2) PCT Publication WO
2008/025791 to Euro-Celtique ("Euro-Celtique") (JTX188; DFF145); (3) PCT Publication WO

patent indicates that the meaning of"optimized absorption" is limited to absorption bioequivalent to the Suboxone®
tablet. (D.I. 396 at 21). Thus, "a skilled artisan is unable to determine whether any particular product not having
bioequivalent absorption.meets [the sufficient to optimize absorption] limitation, rendering claims 1, 3, and 6
indefinite." (Id.).
Reckitt argues that the Court's construction of the "sufficient to optimize" term "indicates bioequivalent
absorption as compared to Suboxone tablets." (D.I. 406 at 24-25 (quoting Dr. McConville's testimony at Tr.
1131: 18-20) (internal quotation marks omitted)). Because the "sufficient to optimize" term means absorption
bioequivalent to the Suboxone® tablets, according to Reckitt, persons of skill in the art have no difficulty
understanding and applying the term. (Id. at 25 (citing '832 patent for explanation of what is considered
bioequivalent to the Suboxone® tablet)).
The Court's construction, however, did not equate "sufficient to optimize absorption" with absorption
bioequivalent to that of the Suboxone® tablet. Instead, it indicated that bioequivalent absorption to the Suboxone®
tablet was one example of optimized absorption. (See D.I. 156 at 11-12 ("The term 'sufficient to optimize
absorption of said buprenorphine' means sufficient to reach an optimum level ofbuprenorphine absorption that
includes a bioequivalent absorption as compared to the absorption after administration of Suboxone® tablets."
(emphasis added))). Still, Defendants have failed to prove that because "optimized absorption" is not limited to
bioequivalent absorption, the patent provides insufficient guidance to persons of skill in that art as to what
absorption qualifies as "optimized absorption." The term "sufficient to optimize absorption" therefore does not
render claims 1, 3, and 6 ofthe '832 patent indefinite.

16

2008/040534 to LabTec ("LabTec") (JTC186; DFF148); (4) Cassidy et al., "Controlled buccal
delivery ofbuprenorphine," Journal of Controlled Release (1993) ("Cassidy") (JTXl 17;
DFF153); and (5) U.S. Patent Application Publication No. 2005/0085440 to Birch ("Birch")
(JTXl 79; DFF157). In particular, Defendants argue that "[t]he combination of the Suboxone
sublingual tablet with EuroCeltique or LabTec in view of Cassidy and Birch renders claim 1
obvious." (DFF197). There is no dispute that each of these references is prior art to the '832
patent. (D.1. 353-1 at iii! 123, 125-29).
Suboxone® sublingual tablets provided effective selective transmucosal delivery of
buprenorphine, but not naloxone, under the tongue. (Tr. 1291:6-22,1294:12-1295:1, 1474:11475:1, 1475:7-11; JTX239 at 12; JTX240 at 4). Suboxone® sublingual tablets included an
acidic buffer of sodium citrate and citric acid that was effective in pHs ranging from 3 .0 to 6.2. 8
. (Tr. 1296:21-1297:9, 1327:23-1328:4; JTXl 76 at 12; JTX240 at 24; D.I. 353-1 at if 188). EuroCeltique instructed a person of skill in the art to make pharmaceutical films containing
buprenorphine and, optionally (but preferably), naloxone. (JTX188 at 12-13, 21-22; Tr.
1298:10-14). Euro-Celtique also instructed that "[a]s far as drug substitution therapy is
concerned, the effectiveness of the afore-described amounts and pharmacokinetic parameters of
buprenorphine and optionally naloxone are known from the pharmaceutical preparations of
Subutex® and Suboxone®." (JTXl 88 at 22). Euro-Celtique disclosed a film designed for
sublingual transmucosal absorption. (Id. at 7). Euro-Celtique disclosed the preferred
pharmacokinetic parameters for buprenorphine in its oral dosage forms. (Id. at 10, 21; Tr.

8

Defendants also proffered opinion testimony by Dr. Bley that relied on the dissolution pH testing of Suboxone®
tablets in a small amount of water. (Tr. 1309:20-1323:11; see also DFF165-DFF167). The dissolution test results
were reported in a declaration submitted on behalf of a Reckitt competitor in an '832 patent inter partes review
proceeding (the "Reitman declaration"). (Tr. 1391:24-1392:12). The Reitman declaration itself is inadmissible
hearsay. FED. R. EvID. 80l(c), 802. Dr. Bley testified that he "would have never used something as, taken from
litigation to do formulating in the lab." (Tr. 1315: 13-15). Dr. Bley's opinions based on the Reitman declaration are
therefore inadmissible under Federal Rule of Evidence 703.

17

1298:20-1299:6). Euro-Celtique did not disclose any phannacokinetic parameters for naloxone.
(See JTXl 88; Tr. 1420: 17-22). LabTec instructed making non-mucoadhesive orally

disintegrating pharmaceutical films intended for.gastrointestinal tract absorption that "mimic the
phannacokinetic profile [and bioabsorption] of orally administered drug products such as tablets,
[etc.]." (JTXl 86 at 3). LabTec identified Suboxone® sublingual tablets as a drug of interest to
make into a bioequivalent film. (JTX186 at 21, 23). Cassidy teaches that buprenorphine absorbs
transmucosally across buccal tissue at acidic pHs. (JTXl 17 at 3, 5-7, Fig. 4; Tr. 1303:201305:10). Birch teaches that buprenorphine absorbs transmucosally across nasal mucosa at
acidic pHs. (JTXl 79 at 13-14, 19; Tr. 1305:17-1307:22).
Defendants argue that LabTec instructed a person of skill in the art to make a film
product mimicking the phannacokinetics and bioabsorption of Suboxone® sublingual tablets.
(D.I. 396 at 11; JTX186 at 3, 23; Tr. 1299:11-22, 1302:2-15). Defendants further argue that it
was well known that the Suboxone® sublingual tablets provide for sublingual transmucosal
delivery of buprenorphine and that buprenorphine does not absorb via the gastrointestinal tract.
(D.I. 396 at 13; Tr. 1302:2-15). Dr. Bley testified that "LabTec essentially contains all the
building blocks of the '832 patent application." (Tr. 1299:11-13). Thus, Defendants maintain
that LabTec directed a person of skill in the art to make a film product for the sublingual
transmucosal delivery ofbuprenorphine. (DFF150).
Reckitt contends that LabTec did not instruct a person of skill in the art to create a
sublingual film comprising buprenorphine and naloxone because LabTec specifically designed
its films to have predominantly gastrointestinal absorption and to avoid or minimize oral
transmucosal absorption. (D.I. 406 at 19-20; PFF580-PFF584). Reckitt points out that,
although LabTec "merely listed Suboxone Tablets among 19 'drugs of interest' for potential

18

development into film dosage forms," LabTec consistently distinguished its films from those
intended for absorption in the mouth and therefore teaches away from the invention claimed in
the '832 patent. (DFF150; see also PFF640-PFF642). Dr. Davies opined that, in light of the
objects ofLabTec, the inclusion of the Suboxone® tablet as a drug "of interest" would not
instruct a person of skill in the art to make the films clainied in the '832 patent. (Tr. 1409:71415: l 5). Dr. Bley disagreed with Dr. Davies' assessment, testifying that "a person of skill in
the art would have clearly known that the instruction [in LabTec] was to make a sublingual
delivery form ofbuprenorphine. (Tr. 1302:8-15).
LabTec distinguished prior art "focused principally on improving the delivery p~ofile of a
given pharmaceutical agent" in favor of "appreciat[ing] that an innovator's drug product, be it a
tablet, capsule, or other oral dosage form, has already proven itself effective through rigorous
clinical testing." (JTX186 at 3). Indeed, LabTec recognized that "[w]hat is needed is a film
product that mimics the pharmacokinetics of an innovator's product, and that follows the same
metabolic and bioabsorption pathways as the innovator's product." (Id.). On the other hand,
LabTec taught means for preventing oral transmucosal absorption and promoting gastrointestinal
absorption. (Id. at 15). Additionally, LabTec instructed that "adjust[ing] the pH of the
environment surrounding the dosage form" could reduce the transmucosal permeability of the
active agent. (Id. at 16). On the whole, however, I find that a person of ordinary skill would
read the disclosure in LabTec to instruct making a pharmaceutical film mimicking the
transmucosal absorption of the Suboxone® tablet.
Reckitt argues that a person of skill in the art "would have expected insufficient
buprenorphine absorption in [the claimed] pH range and have had no reason to copy Suboxone
Tablet's citric acid and sodium citrate in devising a film formulation." (D.I. 406 at 19 (emphasis

19

omitted)). Reckitt maintains that a person of skill in the art would have had no reason to
investigate pH to achieve bioequivalent absorption to the Suboxone® tablet because the '832
patent was first to teach that pH was critical to absorption of buprenorphine. (Id. at 22). Further,
Reckitt argues that pH Partition Theory teaches away from the claimed pH range. (Id. at 22-23).
"pH Partition Theory teaches that the un-ionized form of a drug should preferentially diffuse
across the membrane of the oral mucosa and subsequently get absorbed into the bloodstream."
(PFF557; see Tr. 1403:17-1404:1, 1404:8-11). At the acidic pH 3.5, more than 99.99% of
buprenorphine exists in its ionized form, which, according to pH Partition Theory, is less readily
absorbable. (PFF561; see Tr. 1405:5-9). Thus, pursuant to pH Partition Theory, a person of
ordinary skill would have expected that "buprenorphine in a polymeric carrier matrix buffered to
a local pH of about 3 to about 3 .5 would not provide sufficient absorption of buprenorphine
through the sublingual mucosa." (PFF555; see Tr. 1401:16-1402:6, 1404:24-1405:9, 1452:91453:1).
Reckitt argues that a person of ordinary skill in the art would have expected
buprenorphine to follow pH partition theory even in light of Cassidy and Birch, which taught that
that transmucosal absorption ofbuprenorphine occurs at acidic pHs. (D.I. 406 at 20-21; JTXl 79
at 19, Table 11; JTXl 17 at 4, Fig. 1; Tr. 1328:15-1329:14, 1357:1-11, 1383:3-1384:12,
1483: 19-1484:9). First, Reckitt argues that pH Partition Theory was well established in the
pharmaceutical arts. (D.I. 406 at 20). Reckitt cites several references, including a 2007 book
chapter co-authored by Par's expert, Dr. Michniak-Kohn, in support of its argument that the
literature in the field consistently taught that buprenorphine followed pH Partition Theory.
(PFF715-PFF716 (citing JTX44, JTX50, JTX51, JTX72, JTX73); see JTX44 at 10; Tr. 1452:91453:1). Dr. Michniak-Kohn's book chapter cited Weinberg (JTX72) for the proposition that

20

"studies cond,ucted with sublingual administration of opioids such as buprenorphine ... showed
increased absorption with increase in pH}' (JTX44 at IO). Second, Reckitt argues that persons
skilled in the art would not have read Cassidy and Birch to teach that buprenorphine does not
I

follow pH Partition Theory. (D.I. 406 at 20-21). In support of this argument, Reckitt maintains
that neither Cassidy nor Birch has been cited in the art as teaching that buprenorphine does not
follow pH Partition Theory and that, even after Cassidy and Birch were published, references in
the field continued to teach that buprenorphine followed pH Partition Theory. (See PFF717
(citing, e.g., JTX44 at 10); Tr. 1452:9-1453:1). Further, Dr. Davies testified that Cassidy and
Birch did not report on the effect of pH on absorption; instead, they reported the effect of pH on
the solubility ofbuprenorphine. (Tr. 1434:23-1435:4, 1439:21-1440:11, 1445:20-1446:5,
JTXl 17 at 2, 4, JTXI 79 at 16; see also Tr. 1353:22-1358:16; 1441:7-1443:2 (explaining that the
solubility of a drug is a separate and distinct question from its transmucosal absorption)).
Finally, Dr. Davies testified that Birch is inapposite because absorption in nasal mucosa and
absorption in oral mucosa are fundamentally different. (Tr. 1445:5-14, 1447:24-1449:14; see
also Tr. 1387:11-1388:9).
In light of the overall evidence, I conclude that a skilled artisan would have copied the

Suboxone® tablet's buffer and its pH in creating a film dosage form ofbuprenorphine and
naloxone. Suboxone® tablets included a sodium citrate and citric acid buffer that was effective
in a pH range of3.0 to 6.2. (D.I. 353-1atif188; JTX240 at 24; JTXI 76 at 12; Tr. 1296:211297:9, 1327:23-1328:4). pH was known in the prior art to affect transmucosal absorption. (Tr.
1355:5-1362:13, 1490:3-16; DFF184). "Where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable ranges by routine
experimentation. This rule is limited to cases in which the optimized variable is a 'result-

21

effective variable.'" In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)
(citations, internal quotation marks, and alterations omitted). A skilled artisan therefore would
copy the Suboxone® tablet's buffer and its pH in creating a film dosage form. (See Tr. 1329:151330: 12; JTX205 at 1, 4, 6. But see PFF766-PFF784). A person of skill in the art who did not
have access to directly measure the dissolution pH of the Suboxone® tablet would have
formulated a bioequivalent film within the operative pH range of the buffer and routinely and
iteratively modified the formulation to achieve the target bioabsorption parameters. (Tr.
1296:21-1297:9, 1327:23-1328:19; see also JTX240 at 2; D.I. 353-1 at if 188). Further, a
person of skill in the art would have expected that the lower end of the buffer's operative pH
range would achieve the targeted selective bioabsorption parameters of buprenorphine and
naloxone because (1) a skilled artisan knew that transmucosal absorption ofnaloxop.e decreases
as pH decreases and (2) Cassidy and Birch taught that transmucosal absorption ofbuprenorphine
occurs at acidic pHs. (Tr. 1328:5-1329:14, 1383:3-1384:12, 1483:19-1484:9; JTXl 17 at 4, Fig.
1; JTXl 79 at 19, Table 11; DFF181). Although Dr. Davies testified that absorption in nasal and
oral mucosa is fundamentally different (Tr. 1445:5-14, 1447:24-1449:14; see also Tr. 1387:111388:9), Dr. Bley testified that, because the nasal and oral mucous membranes are structurally
similar, a person of skill in the art would expect the teachings of Birch regarding absorption of
buprenorphine at acidic pHs to apply to oral as well as nasal mucosa. (Tr. 1308:5-1309:14,
1387:11-1388:9; DFF159). Further, Cassidy teaches that absorption ofbuprenorphine across
oral mucosa occurs at acidic pHs. (JTXl 17 at 3, 5-7, Fig. 4; Tr. 1303:20-1305:10). A person of
skill in the art would have credited specific data demonstrating that buprenorphine is
transmucosally absorbed at pH values within or near the claimed range over the general
implications of pH Partition Theory. (See JTXl 17 at 4; JTXl 79 at Table 11). I therefore

22

conclude that claims 1, 3, and 6 are obvious in light of the Suboxon:e® tablet, Euro-Celtique,
LabTec, Cassidy, and Birch.
Defendants argue that claims 15-19 of the '832 patent are invalid as anticipated or
obvious over Euro-Celtique and LabTec. (D.I. 396 at 18). Independent claim 15 of the '832
patent, from which claims 16-19 depend, recites "[a]n orally dissolving film formulation
comprising buprenorphine and naloxone, wherein" the formulation produces certain Cmax and
AUC pharmacokinetic parameters. ('832 patent, 24:56-61). "When a claim element is recited
as a range of values, ... that claim element is anticipated by a prior art disclosure which
describes any value in that range." Bristol-Myers Squibb Co. v. Boehringer Ingelheim Corp., 86
F. Supp. 2d 433, 440 (D.N.J. 2000), aff'd in part, vacated in part on other grounds sub nom.
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001).
LabTec does not anticipate claims 15-19 of the '832 patent. LabTec does not anticipate
claim 17 because claim 17 specifies a mean AUC range for naloxone, and LabTec does not
disclose AUC values for naloxone. (See JTX186 at 23; '832 patent, 24:65-67). Otherwise,
LabTec discloses orally dissolving film formulations comprising buprenorphine and naloxone
with the pharmacokinetic and dosage parameters claimed in claims 15, 16, 18, and 19. (See
JTX186 at 21, 23; '832 patent, 24:56-25:6). However, the disclosures in LabTec do not
anticipate because they are not enabling. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1354 (Fed. Cir. 2003) ("A claimed invention cannot be anticipated by a prior art
reference if the allegedly anticipatory disclosures cited as prior art are not enabled"); Forest
Labs., Inc. v. Ivax Pharms., Inc., 438 F. Supp. 2d 479, 487 n.3 (D. Del. 2006), aff'd, 501 F.3d
1263 (Fed. Cir. 2007) ("[E]ven if the patentee is required to present some evidence of
nonenablement, the burden still rests on the party asserting invalidity to ultimately demonstrate

23

by clear and convincing evidence that the prior art is enabled."). LabTec is not enabling because
it describes designing films for optimum gastrointestinal absorption. (See JTX186; Tr. 1380:91381 :2, 1414:17-1415:15). It does not disclose a film designed for sublingual mucosa!
absorption. (See JTX186; Tr. 1414:17-1415:15). Given that the claimed pharmacokinetic
parameters for buprenorphine and naloxone cannot be achieved in a film designed for
gastrointestinal absorption (see Tr. 1380:9-1381:2, 1415:5-1416:15), LabTec does not enable
one of skill in the art to formulate the claimed films.
Euro-Celtique does not anticipate claims 15-19 because, although Euro-Celtique
discloses an orally dissolving film formulation comprising buprenorphine and naloxone, it does
not disclose the Cmax or AUC values ofnaloxone in its films. (See JTX188).
Euro-Celtique and the European Medicines Agency Initial Marketing-Authorisation
Document, Scientific Discussion, Oct. 19, 2006 for Suboxone® tablets (JTX239) render claims
15-19 obvious. Euro-Celtique states that "the effectiveness of the afore-described amounts and
pharmacokinetic parameters ofbuprenorphine and optionally naloxone are known from the
pharmaceutical preparations Subutex® and Suboxone®. Therefore it can be firmly assumed that
the same efficacy will be observed in drug substitution therapy with the inventive preparations of
the present invention." (JTX188 at 22). The European Medicines Agency document is prior art
to the '832 patent. (D.I. 353-1 at if 125). The European Medicines Agency document states the
pharmacokinetic parameters of naloxone in Suboxone® sub lingual tablets, which are within the
claimed ranges. (JTX239 at 12; '832 patent, 24:56-25:6). Formulating a dosage form to achieve
specific pharmacokinetic values was routine and formulating orally dissolving films designed for
sublingual mucosa! absorption was disclosed in Euro-Celtique. (Tr. 1342:5-1347:18, 1486:21-

24

1488:16; JTX188 at 13-14, JTX254). Thus, the inventions claimed in claims 15-19 of the '832
patent would have been obvious to one of skill in the art.
Secondary considerations do not render the asserted claims of the '832 patent nonobvious. At trial, Reckitt presented evidence going to secondary considerations, including longfelt need, failure of others, and praise of the Suboxone® sublingual film. (Tr. 87:19-88:6,
1297:13-1298:1 (praise), 1368:2-1369:13, 1370:15-1372:6, PTXl 147 (failure of others); 78:2085:15, 419:23--420:1 (long-felt need); see also D.I. 406 at 24, 28). Reckitt maintains that the
Suboxone® sublingual film is an embodiment of the asserted claims of the '832 patent.
i

(PFF664--PFF666, PFF790-793). Defendants argue that,Reckitt failed to meet its burden to
establish a nexus between the claimed invention and the secondary considerations asserted. (D.I.
396 at 19). Reckitt failed to establish a nexus between Suboxone® sublingual film and claims 1,
3, and 6 of the '832 patent because there is no record evidence of the local pH of Suboxone®
film. 9 Reckitt established a nexus between Suboxone® sublingual film and claims 15-19 the
'832 patent. (JTX27 at 26-30). Still, the secondary considerations do not point to nonobviousness with sufficient force to overcome the other evidence that claims 15-19 are obvious
in light of Euro-Celtique and the European Medicines Agency document. See Wyers v. Master
Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) ("[S]econdary considerations of

nonobviousness-considered here by the district court-simply cannot overcome a strong prima
facie case of obviousness.").

9

Reckitt cites JTX54 at 23 and PTX163 at 7, 23-25 as evidence that Suboxone® sublingual film contains a buffer in
an amount to provide a local pH of about 3.0 to about 3.5. (PFF793). That the buffer provides a local pH within the
claimed range is not apparent from JTX54 and Reckitt provides no further explanation. (See id.). PTX163 does
describe pH measurements obtained by dissolution testing. Those measurements, however, cannot establish the
required nexus because it is not clear that they are measuring "local pH."

25

I'

Thus, the Court finds that Defendants have proved by clear and convincing evidence that
all asserted claims of the '832 patent are obvious and that asserted claims I, 3, and 6 are
indefinite. Defendants did not prove their other invalidity challenges to the asserted claims of
the '832 patent.
B.

Infringement

1.

Findings ofFact

I. During their respective development efforts, Watson and Par obtained pH measurements by
performing in vitro dissolution testing.
2. In vitro dissolution testing does not yield measurements of "local pH'' as that term is used in
the '832 patent.
3. Buffer Maker is not a tool to calculate "local pH."
4. Watson's ANDA contains a pH specification for its ANDA Product of 3.0 to 5.0.
5. Par's ANDA contains a "Quality Target Product Profile" for its ANDA Product that states a
pH target of 3.5 to 4.0.
6. The pH values reported in Watson's ANDA do not correspond to local pHs from about 3 to
about 3 .5 in the presence of saliva.
7. The pH values reported in Par's ANDA and the pH values obtained by IntelGenx pH testing
do not correspond to local pHs from about 3 to about 3 .5 in the presence of saliva.

2.

Condusions ofLaw
a)

Claims I, 3, and 6

Watson admits that its ANDA Product meets all limitations of claims 1, 3, and 6 of the
'832 patent except for the "local pH" and "sufficient to optimize absorption" limitations.
(PFF167; PFF168). Par admits that its ANDA Product meets all limitations of claims 1, 3, and 6
of the '832 patent except for the "local pH" and "buffer" limitations. (PFF264-PFF267,
PFF303-PFF306).

26

Claim 1 of the '832 patent recites "a local pH for [the claimed] composition ... from
about 3 to about 3 .5 in the presence of saliva." (' 832 patent, 23 :58-67). The Court construed the
term "local pH" to mean "the pH of the region of the carrier matrix immediately surrounding the
active agent as the matrix hydrates and/or dissolves, for example, in the mouth of the user." (D.I.
156 at 11). Reckitt argues that Watson's and Par's ANDA Products meet the local pH limitation.
(D.I. 397 at 20). Watson and Par argue that Reckitt has not proven that their ANDA Products
meet the local pH requirement because Reckitt presented no test results showing the local pH of
Watson's or Par's ANDA Product. (D.I. 407 at 7; D.I. 408 at20).
Reckitt did not measure the local pH of samples of Watson's and Par's ANDA Products.
(Tr. 879:4-17; see also D.I. 397 at 23, 28). Instead, Reckitt relies on pH data in the ANDAs as
evidence that the ANDA Products meet the local pH limitation. (See D.I. 397 at 23, 28).
Watson's ANDA contains a target pH value for its ANDA Product of3.0 to 5.0. (JTX87 at 45,
47; see also Tr. 1116:11-18). Par's ANDA contains a "Quality Target Product Profile" for its
ANDA Product that states a pH target of 3.5 to 4.0. (JTX269 at 4; see also Tr. 918:10-17).
Additionally, IntelGenx conducted pH testing.on a prototype of Par's ANDA Product that
yielded pH measurements around 3.5. (JTX 270 at 108; see also Tr. 922:13-923:9). Watson and
Par obtained the pH measurements in their AND As by conducting in vitro dissolution testing.
(Tr. 1116:15-1122:2; 1197:10-19). Reckittmaintains that those values, with calculated
adjustments, demonstrate that the ANDA Products' local pHs fall within the claimed range.
(D.I. 397 at 20). Dr. Davies, Reckitt's expert, testified that, although Watson's and Par's
dissolution testing was done in a larger volume of solvent than would be present in the mouth,
local pH can be calculated by adjusting the reported pHs to account for the smaller amount of
saliva in the mouth. (Tr. 875:13-877:17, 921:15-922:12). Dr. Davies testified that, after the

27

appropriate adjustment, the pHs reported by Watson's and Par's ANDAs correlate to local pH
values within "about 3 to about 3.5." (Tr. 884:17-22, 888:7-8, 922:6-12, 923:24-924:20).
Reckitt argues that Dr. Davies' analysis of Watson's and Par's reported pHs is reinforced by his
calculations of local pH using the software "Buffer Maker." (D.I. 411 at 10).
Par and Watson argue that Reckitt has not demonstrated that the local pHs of their
ANDA Products are "about 3 to about 3.5" because: (1) Reckitt has not established that in vitro
dissolution testing or calculations using Buffer Maker are valid tests for measuring local pH; (2)
Dr. Davies' adjustments to Watson and Par's reported pH values are unfounded; and (3) the
word "about" does not expand the claimed range beyond routine measurement error. (D.I. 407 at
7-14; D.I. 408 at 20-25). Par argues, further, that even if Dr. Davies' analysis were valid, he
relies only on pH values related to Par's early prototypes, not its ANDA Product, to calculate the
local pH of Par's ANDA Product. (D.I. 407 at 10-11).
Reckitt has not met its burden to show that in vitro dissolution testing yields a valid local
pH measurement. Dr. Davies testified that, to determine the local pH of a film dosage
composition, a person of ordinary skill in the art would dissolve a film in an appropriate volume
ofliquid and measure the resulting pH. (Tr. 872:6-873:6, 877:18-879:3). Local pH is the pH
within the matrix and around the active "as the matrix hydrates and/or dissolves." (D.I. 156 at
11 ). Dissolution testing, however, measures pH in a closed system in solutions in which the
matrix has completely dissolved. (Tr. 1194:14-1195:11). Dr. Davies testified that the pH
measured after dissolution will not be significantly different from the pH measured when the
matrix begins to hydrate and dissolve because the buffering components of the film establish and
maintain the local pH during and after dissolution. (Tr. 877:18-879:3, 977:21-978:10). There is
no support for Dr. Davies' assertion that, despite the fact that buffer and saliva flow into and out

28

of the mouth during dissolution, the buffering components of Watson's and Par's ANDA
Products maintain the local pH from beginning of dissolution until the matrix is fully dissolved.
See Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1296 (Fed. Cir. 2006) (holding that, to rely

on in vitro approximations of in vivo measurements, the proponent must credibly link the in vitro
method with the relevant in vivo parameter). In an open system such as the mouth, the
components of the matrix are absorbed and swallowed at different rates. (Tr. 1192:1-12). Dr.
McConville testified that, even with a buffer, it is not possible to say that the pH after dissolution
of the matrix is the same as during dissolution because the buffer itself is released during
dissolution of the matrix and there is a constant flow of saliva and buffer into and out of the
mouth. (Tr. 1114:20-1115:1, 1121:5-1122:22).
Dr. Davies' conversion of Watson's and Par's reported dissolution pHs to correlated local
pHs is unsupported. (See Tr. 883:11-22, 921:18-922:4). As an initial matter, Dr. Davies did not
provide any support for his opinion that 0.25-1.0 mL of saliva is present in the mouth during
dissolution. (See Tr. 975:5-976:20; see also Tr. 1117:15-1118:17). Dr. Davies testified that
reducing the volume of solvent used in a dissolution test from 8 mL to approximately 0.25 to 1
mL would reduce the pH by about 0.5 units. (Tr. 921 :18-922:12). Dr. Davies also testified that
. reducing the volume of solvent used in a dissolution test from 15 mL to approximately 0.25 to 1
mL would reduce the pH by about 0.5 units. (Tr. 882:21-883:22, 886:24-887:7). Dr. Davies did
not explain why converting Watson's and Par's reported pHs to local pH by subtracting 0.5 pH
units is appropriate for dissolution tests conducted in 8 mL and 15 mL, despite the difference in
initial volume. (See Tr. 1205:21-1206:11, 1208:7-1209:1). 10 Thus, Reckitt's reliance on

10

Additionally, Dr. Toste's Buffer Maker calculations demonstrated that the impact of the volume of solvent on the
dissolution pH varies depending on the components of the formulation that are in the solution. (See JTX274 at 2-3;
Tr. 1208:7-9; DPRF57-58).

29

Watson's and Par's reported pHs to establish that their ANDA Products meet the local pH
limitation is unavailing.
Reckitt also has not established that Dr. Davies' Buffer Maker calculations are valid tests
for measuring local pH. Buffer Maker is a tool for the design of buffers, not a tool to calculate
local pH. (See Tr. 1023:14-1024:14). The patent does not suggest Buffer Maker as a method of
calculating local pH. Dr. Davies acknowledged that the pH results from Buffer Maker have
limited accuracy. (Tr. 1029:15-19). The makers of Buffer Maker instruct that it is good practice
to check buffer pH with a calibrated pH meter. (Tr. 1029:20-1030:1). In addition, Par's expert,
Dr. Toste, used Buffer Maker to demonstrate that, even using the same methods to calculate pH
as Dr. Davies did, the dissolution pH of Par's ANDA Product would be lower than the claimed
range. (JTX274 at 2). Dr. Davies' attempt to rebut those calculations by including alkaline earth
metals, a possible impurity in Par's ANDA formulation, in his Buffer Maker calculations is
unpersuasive. (See Tr. 1209:2-1211:9; see also 926:11-927:15, 970:12-973:21; JTX 271at1;
JTX281; JTX282); see also Glaxo, Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1568 (Fed. Cir.
1997) ("[T]he [Hatch-Waxman] statute requires an infringement inquiry focused on what is
likely to be sold following FDA approval."). More fundamentally, however, for the reasons
described above with respect to pH measurements made using dissolution testing, a pH
calculation using Buffer Maker does not take into account the requirements of the local pH claim
limitation and is therefore not a measurement of "local pH," as that term is used in the patent.
Because Reckitt has not met its burden to prove the local pHs of Watson's and Par's ANDA
Products, it is unnecessary to resolve the parties' dispute regarding the term "about." (See D.I.
407 at 9-1 O; D.I. 408 at 24-25).

30

That Reckitt rylies on reported pH yalues of Par's prototype formulations rather than its
ANDA Product is an additional reason to conclude that Reckitt has not met its burden to show
that Par meets the local pH limitation of claims 1, 3, and 6 of the '832 patent. Even if dissolution
pH could be correlated with local pH, Reckitt has not provided a dissolution pH of Par's ANDA
Product within the claimed range. Reckitt relies on the dissolution pH reported in the "Quality
Target Product Profile" in the development report section of Par's ANDA, but that section
reports a pH based on the Suboxone® film product. (Tr. 950:7-951 :10, 956:13-957:22,
1197:7-19; JTX269 at 4, 15, 16). Reckitt also relies on the dissolution pH reported by IntelGenx
for a different formulation than Par's final ANDA formulation. (See D.I. 397 at 28; Tr. 922:18923:9 (Dr. Davies stating that the formulation tested by IntelGenx had the same ingredients in
the same proportions as Par's final ANDA Product) .. But compare JTX270 at 106-08 with
JTX327 at 2; see also Tr. 955:23-956:11). Reckitt's evidence and argument that Par's ANDA
Product "deliberately mimics the pH of the Suboxone film" is insufficient to prove that Par's
final ANDA Product has the same dissolution pH as the earlier prototypes, especially because
the earlier prototypes were not bioequivalent to the Suboxone® film. (See D.I. 397 at28; Tr.
951: 11-956:3). Par's ANDA does no.t contain dissolution pH measurements of its final
formulation. (Tr. 955:23-956:3, 956:9-12). Thus, even if dissolution pH could be converted to
local pH, Reckitt has failed to meet its burden to prove that Par's ANDA Product satisfies the
local pH limitation of claims 1, 3, and 6 of the '832 patent. 11
Reckitt therefore has not proven that the pH values reported in Watson's and Par's
ANDAs and the IntelGenx pH testing of the Par prototype correspond to local pHs from about 3
to about 3.5 in the presence of saliva. Thus, I conclude that Watson's and Par's ANDA Products

11

I do not reach whether Watson's ANDA Product meets the "sufficient to optimize absorption" limitation or
whether Par's ANDA Product meets the "buffer" limitation.

31

do not meet the "local pH" limitation and consequently do not infringe claims 1, 3, and 6 of the
'832 patent.
b)

Claims 15-19
I

Par does not dispute that its ANDA Product satisfies the limitations of claims 15-19 of

I
.

I
I
I

the '832 patent. (D.1. 407 at 7-15; see PFF307, PFF319). Watson does not dispute that the
2 mg/0.5 mg, 4 mg/1 mg, and 8 mg/2 mg dosage strengths of its ANDA Product satisfy the
limitations of claims 15-19 of the '832 patent. (D.I. 408 at 26; see PFF232-PFF236, PFF247).
Watson does dispute that the 12mg/3mg dosage strength of its ANDA Product satisfies the
limitations of claims 15-19 of the '832 patent. (D.I. 408 at 26).
Claim 15, from which claims 16-19 depend, claims an orally dissolving film formulation
"having a Cmax of between about 0.624 ng/ml and about 5.638 ng/ml for buprenorphine." ('832
patent, 24:56-59). Watson argues that the admitted mean buprenorphine Cmax of 5.77 ng/mL ±
0.47 ng/mL for its 12mg/3mg dosage strength does not fall within the claimed range. (D.I. 408
at 26). Dr. McConville testified that "[a]s you can see, for the 12-milligram, Watson's ANDA
product, it falls outside of that claim range, clearly." (Tr. 1155:15-18). Dr. McConville also
testified that a person of ordinary skill in the art would not take the standard deviation into
account (i.e., by concluding that 5.77 ng/mL ± 0.47 ng/mL falls within the claimed range
because the mean value minus one standard deviation (5.30 ng/mL) falls within the claimed
range. (Tr. 1146:14-1147:9, 1148:8-22).
Dr. Davies testified that that the mean Cmax value of 5.77 ng/mL ± 0.47 ng/mL is within
the claimed range of"about 0.624 ng/ml and about 5.638 ng/ml." (Tr. 900:20-901:19). He
explained that the mean Cmax value of 5.77 ng/mL ± 0.47 ng/mL is within the claimed range
because: (1) a substantial portion of the standard deviation is within the range; (2) 5.77 ng/mL is

32

just 2.3% higher than 5.638 ng/mL; and (3) a person of ordinary skill would expect drugs having
mean Cmax values of5.638 ng/mL and 5.77 ng/mL to behave the same way clinically. (Tr.
901:9-902:4).
In light of the experts' competing assertions regarding whether a person of ordinary skill
would take standard deviation into account in determining whether a mean Cmax value falls
within a certain range, I conclude that Reckitt has failed to satisfy its burden to prove that the
12mg/3mg dosage strength of Watson's ANDA Product satisfies the Cmax limitation of claim
15. Dr. Davies' conclusory assertion that a person of ordinary skill would expect drugs having
mean Cmax values of 5.638 ng/mL and 5.77 ng/mL to behave the same way clinically does not
establish that Watson's ANDA Product infringes under the doctrine of equivalents. (See 901 :20902:4). Watson's 12mg/3mg dosage strength therefore does not infringe claims 15-19 of the
'832 patent, either literally or under the doctrine of equivalents.
For the reasons stated above, Watson's and Par's ANDA Products do not infringe claims
1, 3, and 6 of the '832 patent; Watson's 12mg/3mg dosage strength does not infringe claims 1519 of the '832 patent; the 2 mg/0.5 mg, 4 mg/1 mg, and 8 mg/2 mg dosage strengths of Watson's
ANDA Product would infringe claims 15-19 of the '832 patent if they were v~lid; and the
2 mg/0.5 mg, 4 mg/1 mg, 8 mg/2 mg, and 12mg/3mg dosage strengths of Par's ANDA Product
would infringe claims 15-19 of the '832 patent if they were valid.

IV.

'514 PATENT
A.

Validity

I.

Findings ofFact

1. It is physically impossible for a cast film to be flowable.

33

2. A person of ordinary skill in the art in the context of the '514 patent would possess a
bachelor's degree in pharmaceutical science, chemistry, or a related field, plus two to five years
of relevant experience in developing drug formulations. Alternatively, a person of ordinary skill
in the art could have a master's degree or Ph.D. and less practical experience. (Tr. 315: 15316:5; see also DFF37).
3. The following are prior art to the '514 patent: (1) WO 2000/42992 by LavPharm
Laboratories, Inc. ("Chen") (JTX187) and (2) U.S. Patent No. 4,764,378 ("Bess").
4. The drug content uniformity of the entire range of samples subjected to dissolution testing
reported in Figure 5 of Chen was not within 10% of the desired amount of active.
5. Drug content uniformity was a significant challenge in the manufacture of pharmaceutical
films before and after the priority date of the '514 patent.
2.

Conclusions o/Law
a)

Indefiniteness

Defendants argue that the asserted claims of the '514 patent are invalid for indefiniteness.
(D.1. 396 at 22). "[T]he second paragraph of§ 112 contains two requirements: first, the claim
must set forth what the applicant regards as his invention, and second, it must do so with
sufficient particularity and distinctness, i.e., the claim must be sufficiently definite." Allen Eng'g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002) (alterations, citations, and
internal quotation marks omitted). A claim is not sufficiently definite if, read in light of the
intrinsic evidence, the claim fails to "inform those skilled in the art about the scope of the
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2130 (2014).
The asserted claims of the '514 patent claim a "drug delivery composition comprising:"
(1) a cast film, (2) a particulate active, and (3) a taste-masking agent. ('514 patent, 73:48-

74:10). The claimed cast film further "compris[es] a flowable ... film-forming matrix ... and a
· desired amount of at least one active." (Id. at 73 :49-52). Defendants argue that the asserted
claims of the '514 patent are invalid for indefiniteness because "a pharmaceutical dosage form
34

that is a cast film cannot be flowable." (D.I. 396 at 22). Reckitt maintains that the asserted
claims, read in light of the specification, are not indefinite because they require that the cast film
be made from, and not include, a flowable matrix. (D.I. 406 at 8-12). Reckitt contends that the
Court should reject Watson's and Par's interpretation of the claim because it is a physical
impossibility. (D.I. 397 at 15). Reckitt argues that a reasonable interpretation is that the matrix
must be flowable before drying, not once it is a cast film. (D.L 411 at 7-8). 12
Defendants rely on Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed.
Cir. 1995), and PIN/NIP, Inc. v. Platte Chemical Co., 304 F.3d 1235 (Fed. Cir. 2002), in support
of their argument that the asserted claims of the '514 patent are indefinite. (D.I. 396 at 22). In
Exxon Chemical Patents, Inc., the Federal Circuit held that claims directed to a pharmaceutical

composition comprising specific amounts of five separate chemicals claimed "a composition that
contains the specified ingredients at any time from the moment at which the ingredients are
mixed together." 64 F.3d at 1558; see also PIN/NIP, Inc., 304 F.3d at 1244 (interpreting claim
language pursuant to the principles set forth in Exxon Chemical Patents, Inc.). Given that
construction, the Federal Circuit held that "[u]nder the proper charge, the jury would not have
been asked if [Defendant] used [patentee's] starting ingredients. Instead, the jury would have
been asked to find whether ... [Defendant's] products at some time contained each of the
claimed recipe ingredients in the amounts specifically claimed." Id. Defendants argue that
under Exxon Chemical Patents, Inc. and PIN/NIP, Inc., the drug delivery composition claimed in
the '514 patent exists when the claimed elements are present at the same time. (D.I. 396 at 22).
Defendants maintain that, because the claims therefore require both a flowable matrix and a cast

12

Reckitt argues, further, that Watson's and Par's noninfringement positions with respect to the cast film element
are inconsistent with their positions regarding indefiniteness. (See D.I. 411 at 7-8; PFF527-532; Tr. 388:19389:16).
.

35

film to be present at one time, the claims are nonsensical and therefore indefinite. (Id.). Exxon

Chemical Patents, Inc. and PIN/NIP, Inc. do not support Defendants' position with respect to the
asserted claims of the '514 patent, however, because the alleged indefiniteness does not arise
from claim elements (i.e., "cast film" and "flowable ... matrix") required by the claims to be
mixed together. Instead, claim 62 of the '514 patent is directed to a "drug delivery composition
comprising" a single component, a "cast film," which in turn "compris[es] a flowable ...
matrix." ('514 patent, 73:48-52). Thus, Exxon Chemical Patents, Inc. and PIN/NIP, Inc. are
inapposite.
The phrase "comprising" has a well-established meaning synonymous with "containing"
and "including." Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed .. Cir. 2004); see also

Invista N Am. S.a.r.l. v. M&G USA Corp., 951 F. Supp. 2d 604, 613 (D. Del. 2013) (applying a
well-established claim construction despite the fact that "the construction of a term in a patent
claim is a highly contextual exercise that is dependent on the particular patent in which the term
appears" (citations and internal quotation marks omitted)). When a claim is directed to a product
"comprising" certain elements, those elements may be described in the claim in the state in
which they exist during manufacture, before the final product exists. See Gemtron Corp. v.

Saint-Gobain Corp., 572 F.3d 1371, 1378 (Fed. Cir. 2009). In Gemtron Corp., the Federal
Circuit construed the claim term "relatively resilient" to mean that "the frame of [a] claimed
shelf has the structural characteristic of having been temporarily deflected and subsequently
rebounded ... at the time of manufacture," not that the frame was required to remain resilient
after the manufacturing process. 572 F.3d at 1380-81. Similarly, inNorian Corp. v. Stryker

Corp., the Federal Circuit held a patentee to its decision to claim a solution "in terms of the
ingredients used to make the solution, rather than in terms of the ions found in the solution after

36

it was made." 432 F.3d 1356, 1362 (Fed. Cir. 2005). Relying on Norian Corp., the Eastern
District of Texas rejected a claim construction "specifying the existence of crystalline citric acid
monohydrate in an aqueous solution" because "[a]lthough citric acid monohydrate in crystalline
form is an ingredient in the mixture, a person of ordinary skill in the art would appreciate that it
would be scientifically impossible for it to remain in crystalline form in an aqueous based
environment" and because "the existence of citric acid monohydrate in crystalline form in a
product for 'ophthalmic administration' would be inconsistent with the understanding of a person
of ordinary skill in the art that a substance containing crystals could not be administered to the
eye." Allergan, Inc. v. Sandoz Inc., 2013 WL 139350, at *5 (E.D. Tex. Jan. 10, 2013).
Here, the asserted claims of the '514 patent require a cast film that "comprises" a
flowable matrix. ('514 patent, 73:48-52). There is no dispute that it is physically impossible for
a cast film to be flowable. (PFF132, DFF128; Tr. 349:11-351:1, 1267:17-21, 529:15-21).
Consequently, a person of ordinary skill in the art would understand that the '832 patent's
claimed cast film "comprises" a flowable matrix in the sense that it includes a flowable matrix as
an ingredient, rather than as a final component. See Allergan, Inc., 2013 WL 139350, *5; see

also Norian Corp., 432 F.3d at 1362. This interpretation is supported by the intrinsic evidence,
which consistently describes the claimed final drug delivery composition as a cast film made
from a wet film-forming matrix that is flowable before it is dried. ('514 patent, Abstract, 9:1014, 22:26-30, 25:21-31; see also Tr. 527:20-533:4).
Because the asserted claims inform those of skill in the art about the scope of the
inventions, the asserted claims are not indefinite under§ 112, if 2.

37

b)

Obviousness

Defendants argue that the asserted claims of the '514 patent are obvious in view of the
knowledge of those skilled in the art and two references disclosing drug content uniformity in
pharmaceutical film formulations. (D.I. 396 at 23). Defendants argue that the purportedly
inventive aspect of the '514 patent, active ingredient content uniformity (or "drug content
uniformity") in a cast film, was both mandated by regulatory agencies and achieved by exercise
ofroutine skill. (Id. at 23-24). Defendants further argue that secondary considerations do not
render the asserted claims of the '514 patent non-obvious. (Id. at 30). Reckitt maintains that no
prior art disclosed dosage units having an active ingredient that satisfies the drug content
uniformity parameters in the asserted claims of the '514 patent. (D.I. 406 at 12).
Defendants rely on two prior art references in support of their argument that the asserted
claims of the '514 patent are obvious: (1) WO 2000/42992 by LavPharm Laboratories, Inc.
("Chen") (JTX187) and (2) U.S. Patent No. 4,764,378 ("Bess") (JTX184). There is no dispute
that Chen and Bess are prior art to the '514 patent. (See D.I. 353-1 at irir 130, 138). Reckitt also
does not dispute that the Chen teaches: (1) "cast film[s] made from a flowable water-soluble or
water swellable film-forming matrix comprising one or more substantially water soluble or water
swellable polymers; and a desired amount of at least one active" ('514 patent, 73:49-52); (2) "a
taste masking agent selected from the group consisting of flavors, sweeteners, flavor enhancers,
and combinations thereof to provide taste-masking of the active" (id. at 73:58-60); (3) a "tastemasking agent [that] is present in the amount of about 0.1-30% by weight of the drug delivery
composition" (id. at 74:31-32); and (4) an "active [that] is an opiate or opiate derivative" (id. at
74:51). (See Tr. 585:1-17; DFF48-DFF50, DFF55, DFF106, DFF109). Thus, the parties'
dispute centers around whether the prior art disclosed dosage units having an active ingredient

38

that does not vary by more than 10% from the desired amount, and whether it would have been
obvious to one of skill in the art to use particles with a size of "200 microns or less" in the
claimed invention. (See D.I. 406 at 12, 16).
Chen does not disclose and would not have rendered obvious to one of skill in the art
"uniformity subsequent to casting and drying of the matrix [that] is measured by substantially
equally sized individual unit doses which do not vary by more than 10% of said desired amount
of said at least one active." ('514 patent, 74:6-10). First, the statements in Chen about
uniformity and homogeneity refer only to the wet matrix and not the final, dried film. (See Tr.
327:1-476:19-477:17, 504:16-22; see, e.g., JTX187 at 15, 17). Second, Figure 5 of Chen, on
which Defendants rely, does not disclose drug content uniformity within 10%. (See JTXl 87 at
43). Figure 5 of Chen is a graph of results of dissolution testing done to measure the release
profile of certain films. (Tr. 334:2-9). Dr. Dyar testified that Figure 5 shows that after ten
minutes, one hundred percent of active content had been released from the disclosed films and
the variation "appear[ ed] to be" within ten percent of the desired amount of active. (Tr. 335: 1722). Dr. Dyar acknowledged that "we don't have the actual data, so it is difficult to see what the
precise numbers would be. But, again, the shape of these curves and the content uniformity that
is being shown here are consistent with the product that could be developed and placed on the
market." (Tr. 382:1-6; see also Tr. 336:23-337:2, 370:8-22). Dr. Langer testified, on the other
hand, that even if one were to make all assumptions in Defendants' favor, Figure 5 does not
disclose drug content uniformity within 10%. (Tr. 510:8-511 :19). Dr. Langer recited the "3
sigma rule" to show that, looking at the entire range of sample measurements in the dissolution
tests reflected in Figure 5, the drug content uniformity achieved in Chen would not have been
within 10%. (Tr. 517:4-520:1). Dr. Dyar's testimony was equivocal regarding whether a person

39

of ordinary skill in the art would apply the "3 sigma rule" to determine drug content uniformity
of a number of samples. (See Tr. 378:13-20, 382:7-16). In light of the experts' testimony, I
find that Chen does not disclose drug content uniformity within the claimed range of 10%.
Defendants have not carried their burden to demonstrate a reasonable expectation of
success in making the claimed invention. Dr. Dyar testified that, even if Figure 5 of Chen does
not show drug content uniformity within ten percent, the content uniformity was close enough so
that, with nothing more than routine experimentation, a person of skill in the art would have
reasonably expected to achieve a film that had drug content uniformity within ten percent. (Tr.
338:4--9, 346:15-347:1). Dr. Dyar did not point to other evidence to support his opinion that a
person of ordinary skill in the art could have achieved the claimed drug content uniformity with
routine experimentation, and he did not explain what that experimentation would have entailed.
(See Tr. 336:17-337:20, 365:20-366:3, 369:19-370:15). On the other hand, Dr. Langer testified,

based on his own experience and literature in the field, to the considerable difficulties persons of
skill in the art had faced in developing a cast film product with the claimed drug content
uniformity. (Tr. 472:5-503:16). I find that achieving drug content uniformity was not
something that could be accomplished before the priority date of the '514 patent by applying
identified strategies to achieve predictable results.
Further, Defendants have not met their burden to prove that a person of ordinary skill in
the art would have been motivated to combine the teachings of Chen and Bess to arrive at the
claimed invention, which requires a particle size smaller than 200 microns. 13 (See '514 patent,
74:1-2). Bess discloses films containing particles between about 55 and 160 microns in size.
(JTXl 84 at 11 :53-65). Chen and Bess contain conflicting teachings regarding desired particle

13

Or smaller than 100 microns, as recited in dependent claim 64. (See '514 patent, 74:13-14).

40

size. (See JTX187 at 2:17-20; JTX184 at 11 :53-65; Tr. 387:16-388:16). Specifically, Chen
disparages prior art in the form of "tablets contain[ing] particulates (>25 microns) which leave a

'gritty' and unpleasant taste in the mouth." (JTXl 87 at 2: 17-20). The smallest particle size
disclosed in Bess, however, is 55 microns. (JTXl 84 at 11 :53-65). Dr. Dyar's conclusory
testimony that "it goes without saying" that "you would want small particles within a film that is
very thin" and that combining the teachings of patents is "what [he] always do [es]" and what he
teaches his students to do "when it's appropriate" is insufficient to overcome Reckitt's evidence
that a person of ordinary skill in the art would not have been motivated to combine Chen and
Bess. (See Tr. 318:18-319:1, 347:21-24).
Reckitt argues tha~ the asserted claims of the '514 patent are not obvious in light of
objective considerations, including long-felt need, failure of others, and praise. (D.I. 406 at 18).
Defendants effectively concede that there was a long-'felt need for uniform pharmaceutical film
formulations, but argue that Reckitt presented no evidence that the '514 patent met that need.
(D.I. 396 at 30). Content uniformity, as Defendants note, continued to be a challenge in the
context of cast films for years after the '514 patent's invention. (See Tr. 480:17-484:14;
PTX215 at 1). Thus, long-felt need and failure of others do not support finding that the asserted
claims are not obvious. The praise that MonoSol and Reckitt received once they began
publishing their work on film technology does suggest that the asserted claims of the '514 patent
were not obvious. (See Tr. 494:14-496:12; PTX213 at 191 (crediting the '514 patent inventors
with discovering that the agglomeration of active particles that led to non-uniformity was caused
. by "relatively long drying times, which facilitated intermolecular attractive forces, convection
forces, and air flow which aided in the formation of such conglomerates."); PTX215 at p.1038
(same)).

41

The Court finds that the asserted claims of the '514 patent are not invalid for obviousness
for the following reasons: First, Chen and Bess do not disclose or render obvious the asserted
claims' requirement that drug content uniformity of the matrix subsequent to casting and drying
does not vary by more than 10% of the desired amount of active. Second, Defendants failed to
meet their burden with respect to expectation of success in achieving drug content uniformity
within 10%. Third, Defendants failed to meet their burden with respect to motivation to combine
Chen and Bess. Fourth, Plaintiffs showed that the '514 patent and its drug content uniformity
limitation garnered praise in the industry.
For the reasons stated above, the asserted claims are not invalid as indefinite under§ 112,

if 2 and they are not invalid for obviousness under § 103.
B.

Infringement

Watson and Par admit that their ANDA Products meet all but two elements of the
asserted claims. (D.I. 353-1 at ifif 91-106; PFF63, PFF65, PFF101-PFF103, PFF108-PFF109,
PFF113, PFF115-PFF116, PFF121, PFF123-PFF124). Watson and Par dispute that their
ANDA Products include "cast film[s] comprising a flowable water-soluble or water swellable
film-forming matrix" (the "cast film element") and that they include matrices that have a
"viscosity sufficient to aid in substantially maintaining non-self-aggregating uniformity of the
active in the matrix" (the "viscosity element"). (D.I. 407 at 15, 17; D.I. 408 at 15, 18).

1.

Findings ofFact

1. Watson's and Par's ANDA Products are cast films.

2. During the casting process and prior to drying, the matrix that is used to form the cast films of
Watson's and Par's ANDA Products is a flowable liquid.
3. Viscosity of a film-forming matrix affects the. self-aggregation of actives.

42

4. Film-forming matrix viscosities within the patent's preferred range are sufficient to aid in
substantially maintaining non-self-aggregating uniformity of the active in the matrix.

2.

Conclusions ofLaw
a)

Cast Film Element

Reckitt argues that, because it is undisputed that Watson's and Par's ANDA Products are
cast films that are made by casting flowable matrices, the ANDA Products satisfy the cast film
element. (D.I.397 at 12). Par argues that its ANDA Product does not infringe because there is
no evidence that all of the claimed elements are satisfied at any single point in time. (D.I. 407 at
15). Par contends that the cast film in its ANDA Product does not "comprise a flowable ...
matrix" as required by the claims because the final film is solid. (Id.). Watson likewise argues
that, "although Watson's ANDA products are made from a flowable matrix, they do not include
.a flowable matrix in their final form. Thus, because claim 62 requires a film that includes a
flowable matrix, Watson does not infringe." (D.I. 408 at 18 (emphasis omitted)).
Watson's and Par's ANDA Products satisfy the cast film element of the asserted claims
of the '514 patent. As discussed above, a person of ordinary skill in the art would understand
that the '514 patent's claimed cast film "comprises" a flowable matrix in the sense that it is made
from a flowable film-forming matrix, not in the sense that it contains a flowable matrix as a final
component. (See supra Part N.A.2.a). Watson's and Par's ANDA Products are formed by
casting a polymer matrix onto a liner and then drying it. (Tr. 833:8-17, 834:2-14; 848:5849: 17). Watson and Par do not dispute that their ANDA Products are cast films. (PFF66,
PFF125). Watson and Par also do not dispute that, during the casting process and prior to
drying, their film-forming matrices are flowable liquids. (PFF66, PFF125). Thus, Watson's and
Par's ANDA Products satisfy the claim limitation reciting "a cast film comprising a flowable
water-soluble or water swellable film-forming matrix." ('514 patent, 73:49-52).
43

b)

Viscosity Element

Independent claim 62 of the '514 patent, from which asserted claims 64, 65, 69, and 73
depend, includes the viscosity element. ('514 patent, 73:53-55). The Court construed the
viscosity element to mean "viscosity sufficient to provide little to no aggregation of the active
within the film." (D.I. 156 at 15). Plaintiffs had argued that the viscosity element should be
construed to include the "individual dosage units [not varying] by more than 10% from the
intended amount of active for that dosage unit" as a part of the construction. ·(Id.). The Court
rejected that, explaining that "[t]his uniformity [limitation does not apply to this element, as it
applies] subsequent to casting and drying, not ... to each step along the way." (Id.).
Reckitt maintains, first, that Watson's ANDA Product meets the viscosity element
because individual doses of Watson's final ANDA Product have drug content uniformity within
10%. (D.I. 397 at 16; see D.I. 353-1 at iii! 92, 103, 104, 182). Reckitt maintains, second, that
Watson's ANDA Product meets the viscosity element because the viscosity of the matrix used to
make Watson's ANDA Product'is within the preferred viscosity range disclosed in the patent.
(D.I. 397 at 15; see JTX19 at 181, 183; Tr. 838:18-840:4).
Reckitt argues that the viscosity of the matrix used to make Watson's ANDA Product is
sufficient to aid in maintaining uniformity because Watson's final ANDA Product is uniform
(D.I. 353-1 at if 182; see also PFF58G)), and, if uniformity is lost at any point during
manufacturing, it cannot be regained. (D.I. 397 at 16; Tr. 474:11-475:12, 829:24-830:13).
Watson argues that the Court should reject Reckitt's attempt to rely on evidence of content
uniformity to prove that Watson's ANDA Product meets the viscosity element. (D.I. 408 at 16).
Relying solely on evidence of final drug content uniformity, a separate claim limitation, to
establish satisfaction of the viscosity element, according to Watson, would read the viscosity

44

element out ofthedaim. (See id. (citingBicon, Inc. v. Straumann Co., 441F.3d945, 950-51
(Fed. Cir. 2006))). Watson thus maintains that Reckitt has failed to meet its burden to prove that
"viscosity plays a role in maintaining uniformity in Watson's ANDA product[]." (Id.).
Evidence that Watson's ANDA Product is uniform is insufficient on its own to show that
the viscosity element is met because, otherwise, the viscosity element would be duplicative of
the content uniformity limitation. See Symantec Corp. v. Computer Assocs Int'!, Inc., 522 F.3d
1279, 1289 (Fed. Cir. 2008) ("[T]he general assumption is that different terms [in the body of a
claim] have different meanings.").
Reckitt also argues that Watson's ANDA Product meets the viscosity element because
Watson's ANDA specifies that the matrix used to make its films has a viscosity that is within the
most preferred range of viscosities recited in the '514 patent specification. (D.I. 397 at 15-16;
'514 patent, 11:23-31; JTX19 at 181, 183; Tr. 839:6-840:4; PFF79). Watson argues that the fact
that its casting dispersion has a viscosity that falls within the '514 patent's "preferred range"
does not prove that the viscosity is sufficient to aid in maintaining uniformity because Reckitt' s
own evidence demonstrates that viscosity in the preferred range will not necessarily aid in
maintaining uniformity. (D.I. 408 at 17). First, Watson points to Reckitt's argument that the
Chen reference does not teach a uniform film even though Chen teaches a casting dispersion
with a viscosity in the preferred range. (D.I. 406 at 13; JTX187 at 15). Second, Watson points
to the testimony ofReckitt's expert, Dr. Langer, that a person of ordinary skill in the art would
need to do routine experimentation to create a uniform film, even if she knew the '514 patent's .
preferred viscosity range. (Tr. 568:16-569:15). Watson thus argues that the fact that the
viscosity of the matrix used to make its ANDA Product falls within the patent's preferred range
is insufficient to show that it has a "viscosity sufficient to aid in substantially maintaining non-

45

self-aggregating unifonnity of the active in the matrix." ('514 patent, 73:53-55; see D.I. 408 at
17). Additionally, Watson argues that it maintains the unifonnity of its ANDA Product with
mixing and immediate drying, not viscosity. (D.I. 408 at 18; Tr. 1158:4-8, 1158:17-J159:8,
1163 :9-18). Reckitt contends that there is no evidence to support Watson's claim that
immediate drying after casting contributes to drug content uniformity. (D.I. 411 at 8 n.2).
Instead, Reckitt argues, Watson's expert Dr. McConville testified that, after mixing, the
dispersion moves onto a heated roller, where Watson was "immediately trying to heat and dry
the film." (D.I. 411at8; Tr. 1163:15-18).
Reckitt has met its burden to show that Watson's ANDA Product meets the viscosity
element based on the viscosity ranges disclosed in Watson's ANDA. The viscosity of the matrix
used to make Watson's ANDA Product is within the preferred range disclosed in the patent.
(JTX19 at 181, 183; Tr. 838:18-840:4, 948:15-20). Watson presented evidence that other
techniques besides viscosity-namely, mixing and immediate drying-yield the content
uniformity of its ANDA Product. (Tr. 1158:4-8, 1158:17-1159:8, 1163:12-18, 1175:11-17; see

also JTX187 at 15; Tr. 568:16-569:15). Mixing by itself, however, does not maintain uniformity
throughout the casting and drying processes because no mixing occurs during casting and drying.
(Tr. 843:14-844:14). Further, the claims state that the viscosity of the matrix must be sufficient
to "aid" in maintaining uniformity and the specification indicates that factors other than viscosity
may contribute to content uniformity. ('514 patent, 23:21-39, 36:61-37:2, 73:53-55; see also
Tr. 841 :12-844:14). Reckitt is thus correct that a product may satisfy the viscosity element even
if factors other than viscosity contribute to the product's drug content uniformity. (See D.I. 397
at 18; '514 patent, 23:21-39, 36:61-37, 73:53-55). Viscosities within the patent's preferred
range are sufficient to aid in preventing the self-aggregation of an active. (See Tr. 836:17-

46

838:17; '514 patent, 11:23-29, 23:21-35). There is no indication that the viscosity of the matrix
used to make Watson's ANDA Product does not play a role in maintaining the uniformity of the
active. Reckitt has therefore met its burden to show that Watson's ANDA Product meets the
viscosity element.
Par admits that its final ANDA Product exhibits drug content uniformity within 5%.
(PFF124). Like Watson, Par argues that relying solely on evidence of final drug content
uniformity to establish satisfaction of the viscosity element would read the viscosity element out
of the claim. (D.I. 407 at 17--:18 (citing Bicon, Inc., 441 F.3d at 950)). For the reasons stated
above, I agree. Par also argues that Reckitt has presented no evidence of the viscosity of Par's
wet blend matrix. (Id. at 17). Par maintains that, in any event, the evidence shows that the
viscosity of Par's wet blend matrix is insufficient to provide little to no aggregation of the active.

(Id. at 18). During development, Par reduced the viscosity of its wet blend matrix. (JTX269 at
25-26; Tr. 1271 :13-23). Par's lower viscosity matrix formulation, the formulation that it uses in
its final ANDA Product, initially failed to result in a film with the desired drug content
uniformity. (JTX269 at 53; Tr. 1258:7-1262:14, 1264:4--1265:23). To address the uniformity
problem, Par introduced a mixing step but did not increase the viscosity of the wet blend matrix.
(JTX269 at 54; Tr. 1273:8-13). Par argues that this series of events shows that the viscosity of
its wet blend matrix is insufficient to provide little to no aggregation of the active in the matrix.
(D.I. 407 at 18-19). According to Par, Reckitt has provided no evidence that during casting and
drying, the viscosity of Par's wet blend is what maintains drug content uniformity. (Id. at 19-20
(citing Tr. 848:21-855:24)).
Reckitt has met its burden to prove that Par's ANDA Product meets the viscosity element
of the asserted claims of the '514 patent. Reckitt has not offered evidence of the numerical value

47

of the viscosity of the wet blend matrix used to make Par's ANDA Product or evidence that the
viscosity is within the preferred range of the patent. Reckitt instead identifies statements in Par's
ANDA to demonstrate that the viscosity of Par's ANDA Product is sufficient to provide little to
no self-aggregation of the active in the matrix. (D.I. 397 at 16; see JTX327 at 23, 34, 40, 18184; Tr. 848:22-850:20). Reckitt's expert, Dr. Davies, relies in part on Par's ANDA for the
proposition that Par's ANDA Product "creates the viscosity required to suspend the
buprenorphine uniformly in the wet blend and prevent precipitation during blending and
coating." (JTX327 at 23; Tr. 848:22-849:19). JTX327 at 23 does not demonstrate that Par's
ANDA Product meets the viscosity element, however, because that page of the ANDA discusses
prototypes that included a 300,000 molecular weight polyethylene oxide ("PEO"), not the
200,000 molecular weight PEO present in Par's fi11al ANDA Product. (JTX327 at 23). The
change from 300,000 molecular weight PEO to 200,000 molecular weight PEO "implies a
reduction in the viscosity of the blend." (Id. at 34). Thus, statements about the viscosities of
prototypes that included a 300,000 molecular weight PEO are not relevant to whether Par's
ANDA Product meets the viscosity element of the asserted claims of the '514 patent.
Dr.. Davies also relies on portions of Par's ANDA that discuss prototypes 3 and 4. (See
Tr. 848:22-855:8; JTX327 at 34, 40, 181-84). Prototype 3 contained a 200,000 molecular
weight PEO and, after addition of EDTA disodium to improve drug product stability, was
ultimately developed into Par's ANDA Product. (See JTX327 at 35, 40). Par's ANDA states
that "the blend viscosity [of prototypes 3 and 4] must be sufficiently high to prevent precipitation
of the active and ensure content uniformity of the drug product." (Id. at 34; see also Tr. 848:22850:21). Additionally, Par's ANDA states that the data obtained in what the parties call a
"holding study" conducted on prototypes 3 and 4 "verifiied] that the viscosity of the wet blend·

48

was high enough to prevent segregation of the buprenorphine HCl for at least 48 hours."
(JTX327 at 34; see, e.g., Tr. 1270:7-9). Par's ANDA states that the PEO "is also responsible for
creating an environment viscous enough to avoid drug substance segregation during wet blend
preparation and coating." (JTX327 at 40; see also Tr.

84~:22-849:15).

In-process uniformity

measurements of Par's wet blend matrix indicated that the buprenorphine uniformity for all
batches fell between 96.3% and 103.2%. (JTX327 at 181-84; Tr. 850:22-853:20).
Par argues that, despite the statements in its ANDA, empirical evidence demonstrates that
Par's ANDA Product has insufficient viscosity to provide little to no aggregation of the active in
the matrix. (D.I. 407 at 18-19; DPRF85). First, Par argues that the holding study discussed at
JTX327 at 34 does not prove that Par's ANDA Product meets the viscosity element because the
study was conducted on a prototype that did not contain a component of Par's final ANDA
Product (EDTA disodium) and because the study measured only the impact of settlement on
segregation of the active, disregarding other forces present during manufacturing. (D.I. 407 at
20; DPRF88). Second, Par's expert Dr. Park testified that Par's wet blend matrix had a viscosity
insufficient to ensure content uniformity and that, to address that issue, Par introduced additional
mixing but did not increase the viscosity. (Tr. 1259:14-1262:14, 1264:4-1266:21, 1272:161273:13; see JTX269 at 53-54). Par's ANDA, however, recognizes the importance of viscosity
not only during the mixing phase, but also during the casting phase of the manufacturing process,
when mixing can no longer contribute to preventing aggregation. (See JTX327 at 40 (discussing
viscosity "during wet blend preparation and coating"); Tr. 849:8-15). Further, it is immaterial
that the holding study measured only the impact of settlement rather than all of the forces present
during manufacturing. Claim 62 requires that viscosity be "sufficient to aid" in maintaining drug
content uniformity in the matrix. ('514 patent, 73:53-55; D.I. 156 at 15). That the viscosity of

49

prototype 3 was able to prevent dis-uniformity caused by settlement is evidence that it
contributes to uniformity in the matrix, even if mixing also contributes significantly. Finally,
there is no evidence that the addition of EDTA disodium affected the viscosity of the wet blend
used to manufacture Par's ANDA Product. (See Tr. 1258:7-1262:14, 1269:24-1273:13 (not
mentioning addition ofEDTA disodium as a reason to reject Dr. Davies' reliance on the holding
study conducted on the prototype 3 formulation)). The evidence summarized above proves that
the viscosity of Par's wet blend matrix is intended to, and does, aid in maintaining non-selfaggregating drug content uniformity in the matrix. Reckitt has therefore met its burden to
establish that Par's ANDA Product meets the viscosity element.
For the reasons stated above, I conclude that Defendants have not proven by clear and
convincing evidence that the asserted claims of the '514 patent are invalid. I also conclude that
Watson's and Par's ANDA Products infringe the asserted '514 patent claims.

V.

'150 PATENT
A.

Invalidity

1.

Findings ofFact

1. A person of ordinary skill in the art would understand the term "molecular weight" in the
patent to refer to viscosity average molecular weight as reported by the manufacturers of
commercial PEOs.
2. The application that issued as the '150 patent was filed as a continuation-in-part tracing back
to Provisional Application No. 60/473,902 (the '"902 Application"), which was filed on May 28,
2003.
3. The '902 Application discloses a film product wherein a PEO oflow molecular weight
"comprises about 60% or more in the polymer component."
4. The asserted claims of the '150 patent are entitled to a priority date of May 28, 2003.

50

2.

Conclusions ofLaw
a)

Indefiniteness

Defendants argue that the asserted claims of the '150 patent are invalid for indefiniteness
because the patent does not state the appropriate measure for the claim term "molecular weight"
and therefore "fail[ s] to inform, with reasonable certainty, those skilled in the art about the scope
of the invention." Nautilus, Inc., 134 S. Ct. at 2124; (D.I. 396 at 31). The experts presented
numerous methods to characterize the molecular weight of PEOs, including number average
molecular weight, weight average molecular weight, Z-average molecular weight, and viscosity
. average molecular weight. (Tr. 428:8-429:1, 434:4--24, 671:12-674:17). The experts also
presented two different experimental methods for obtaining the average molecular weight of
PEOs: rheological measurements and gel permeation chromatography ("GPC") analysis. (Tr.
428:8-429:1, 672: 11-673: 1). Each method yields materially different numerical values for the
molecular weight of the same PEO. (Tr. 434:4-435:19, 674:10-20). Reckitt maintains that the
claims are not indefinite because a person of skill in the art would use GPC analysis to calculate
viscosity average molecular weight. (D.I. 406 at 28-29).
Dow, the manufacturer of the PEO Polyox N80 that Watson and Par use in their ANDA
Products, assigns an approximate viscosity average molecular weight to a sample based on
measurements conducted using a viscometer. (Tr. 131:1-20, 134:7-19, 646:11-651 :4, see
JTX30 at 15). The patent recites a PEO, "[a]vailable from the Dow Chemical Company," in an
example of the invention. (' 150 patent, 48:40-58). Table 22 of the' 150 patent lists values that
represent the approximate viscosity average molecular weights assigned by Dow to different
PEO grades. (Id. at 50:15-18; see also D.I. 156 at 7-9 ("Defendants, at the [Markman hearing],
explained that a person skilled in the art would look at Table 22 of the patent and understand

51

those molecular weight PEOs as the type made by commercial companies, described with
average weights. (D.I. 147 at 48). The Court agrees.")). The '150 patent does not explicitly
describe a method to use to calculate molecular weight.
A person of ordinary skill in the art would understand the term "molecular weight" in the
patent to refer to viscosity average molecular weight as reported by the manufacturers of
commercial PEOs. Reckitt' s expert, Dr. Mathias, testified that a person of skill in the art would
conduct GPC analysis to determine whether a sample of PEO contains discrete sets of a low
average molecular weight PEO and a higher average molecular weight PEO. (Tr. 115:17-119:7;
see also Tr. 194:11-23 (testimony ofReckitt's expert Dr. Yau that GPC analysis is the "best way
and also the only way [he] recommend[s] ... look[ing] at the molecul[ar] weight distribution")).
Defendants' experts testified, however, that a person of skill in the art would not perform GPC
analysis to arrive at viscosity average molecular weight, but would instead rely on the molecular
weight reported by the manufacturer of the PEO. (Tr. 253:5-254:7, 262:23-263:21, 301:23302:23, 428:2-7, 1278:16-21). The claims are not indefinite merely because multiple methods
of measuring molecular weight exist. See Teva Phar. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335,
1344--45 (Fed. Cir. 2015) (analyzing intrinsic evidence to determine whether claim is indefinite);
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 2016 WL 363443, at *8-9 (Fed. Cir. Jan. 29,
2016) (holding viscosity limitation not indefinite despite not reciting temperature at which
viscosity is measured because room temperature was the only temperature mentioned). In the
absence of a specified method to measure molecular weight and in light of the patent's
references to molecular weight as reported by Dow, I find that the weight of the evidence
demonstrates that one of skill in the art would understand that the patent relies on the molecular
weight of Polyox N80 reported by Dow as the measure of"molecular weight." Defendants thus

52

failed to prove by clear and convincing evidence that a person skilled in the art would not know
with reasonable certainty the meaning of "molecular weight" in the context of the '150 patent.
b)

Obviousness

Defendants argue that the asserted claims of the '150 patent are invalid for obviousness
over Yang. (D.I. 396 at 32-33). Reckitt argues that Yang is not prior art to the '150 patent.
(D.I. 406 at 30). Reckitt does not dispute that, if it were prior art, Yang would render the
asserted claims of the '150 patent obvious. (Tr. 687:5-13; see also D.I. 406 at 30-31).
Yang was published on February 17, 2005. (JTXl 78 at 1). The application that issued as
the '150 patent was filed on April 22, 2008. ('150 patent, (22); Tr. 425:5-7). The application
that issued as the '150 patent was filed as a continuation-in-part tracing back to Provisional
Application No. 60/473,902 (the "'902 Application"), which was filed on May 28, 2003. ('150
patent, (60); JTX249 at 1-2; Tr. 443:14--444:3). Reckitt maintains that the' 150 patent is entitled
to a priority date of May 28, 2003. (D.I. 406 at 30-31). Defendants maintain that the '150
patent is entitled to a priority date of April 22, 2008. (D.I. 396 at 33).
The' 150 patent claims are entitled to a priority date of May 28, 2003. To be entitled to
the filing date of an earlier patent application, the earlier application must contain a disclosure
that complies with 35 U.S.C. § 112, if I. See 35 U.S.C. § 120; Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1571 (Fed. Cir. 1997). Section 112, if 1 provides that:
The specification shall contain a written description of the invention, and of the
manner and process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall set forth the best
mode contemplated by the inventor of carrying out his invention.
Independent claims 1and10 of the '150 patent, from which claims 4 and 13, respectively,
depend, recite that the polymer component of the claimed films is comprised of about 60% or

53

greaterofthelowmolecularweightPEO. ('150 patent, 57:37-54, 58:29-46; Tr. 442:8-11). The
parties dispute whether this element is disclosed in the '902 Application. (D.I. 396 at 33; D.I.
406 at 30_:31; Tr. 441:12-445:11, 661:12-668:24). The '902 Application discloses that
certain film properties, such as fast dissolution rates and high tear resistance, may
be attained by combining small amounts of high molecular weight PEOs with larger
amounts of lower molecular weight PEOs. Desirably, such compositions contain
about 60% or greater levels of the lower molecular weight PEO in the PEO-blend
polymer component.
(JTX249 at 31 ). The "polymer component" referred to is all the polymers in the composition.

(See id. at 3, 30-31, 80-83; Tr. 664:13-665:14, 688:11-689:18). Dr. Prud'homme testified that
the '902 Application's disclosure of 60% or greater levels of the lower molecular weight PEO
demonstrates that the inventors possessed the disputed claim element. (Tr. 664:13-665:14).
Defendants' expert Dr. Mcconville testified that the statement that "[d]esirably, such
compositions contain about 60% or greater levels of the lower molecular weight PEO in the
PEO-blend polymer component" "really outlines the entire claim language in claim 1 [of the
'15 0 patent.]" (Tr. 250:15-251 :17 (testifying regarding the passage in the ' 15 0 patent (18: 1121) that appears, word-for-word, in the '902 Application (JTX249 at 31)). Thus, Defendants
have not proven by clear and convincing evidence that the '902 Application did not provide an
adequate written description of the disputed '150 patent claim limitation. Yang is therefore not
prior art and the asserted claims of the '150 patent are not invalid as obvious.
For the reasons stated above, the asserted claims of the ' 15 0 patent are not invalid.
B.

Infringement

1.

Findings ofFact

1. Polyox N80 contains PEO molecules with a normal distribution of molecular weights.
2. A person of ordinary skill in the art would determine the average molecular weight of PEO by
reference to the commercially reported average molecular weight.
54

3. A person of ordinary skill would not necessarily expect that a PEO made by combining one or
more low molecular weight PEOs with one or more higher molecular weight PEOs would yield a
bimodal distribution of molecular weights.
4. Dow reports a single approximate molecular weight for Polyox N80 of 200,000 daltons.

2.

Conclusions ofLaw

Reckitt asserts independent claim 1 and dependent claim 4 of the '150 patent against
Watson. (D.I. 353-1 atif 39). Reckitt asserts independent claim 10 and dependent claim 13 of
the '150 patent against Par. (D.I. 353-1atif41; D.I. 372-1atif228). Claim 1 and claim 10 of
the '150 patent each claim "[a] mucosally-adhesive water-soluble film product comprising,"
among other things, polyethylene oxide, wherein:
the polyethylene oxide comprises one or more low molecular weight polyethylene
oxides and one or more higher molecular weight polyethylene oxides, the molecular
weight of the low molecular weight polyethylene oxide being in the range 100,000
to 300,000 and the molecular weight of the higher molecular weight polyethylene
oxide being in the range 600,000 to 900,000; and
the polyethylene oxide of low molecular weight comprises about 60% or more in
the polymer component.
(the "PEO limitation") ('150 patent, 57:46-54, 58:38-46). The Court construed the PEO
limitation to mean that the polyethylene oxide comprises:
(i) one or more polyethylene oxides having a lower average molecular weight in
the range of 100,000 to 300,000; and (ii) one or more polyethylene oxides having
a higher average molecular weight in the range of 600,000 to 900,000[;] and (iii)
the polyethylene oxide having the lower average molecular weight comprises about
60% or more by weight in the polymer component.
(D.I. 156 at 6). The Court construed "molecular weight" as "average molecular weight." (Id. at
7). The Court also "agree[ d] with Defendants that the product cannot be comprised of ... only
low average molecular weight PEOs with stray higher average molecular weight PEOs." (Id. at
9).

55

Watson's and Par's ANDA Products both include a commercial grade of PEO
manufactured by Dow Chemical known as Polyox N80. (D.I. 353-1 at if 110; D.I. 372-1 atif
246; JTX30 at 15). As an inherent result of the synthesis process, commercial PEOs like Polyox
N80 contain a distribution of molecules of different molecular weights. (Tr. 117 :6-18, 150:23151: 13, 151 :18-152:14). Dow assigns average molecular weights to its PEO product lots
according to rheological measurements taken with a viscometer. (Tr. 207:21-208:14, 458:1315, 460:12-19; JTX30 at 15). Dow specifies an average molecular weight of 200,000 daltons for
PEO lots having a viscosity between 55-90 centipoise, as measured by a viscometer. (Tr.
207:21-208:14, 460:12-19; JTX30 at 15). Dow markets Polyox N80 as having an average
molecular weight of 200,000 daltons. (JTX30 at 15; D.I. 353-1 at if 186).
Watson and Par maintain that their ANDA Products comprise single, low average
molecular weight PEOs and therefore do not meet the PEO limitation of the claims asserted
against them, respectively. (D.I. 407 at 21; D.I. 408 at 9). Reckitt argues that Polyox N80 meets
the PEO limitation of claims 1 and 10 and that Watson's and Par's ANDA Products therefore
infringe the claims asserted against them. (D.I. 397 at 36). Watson and Par do not dispute that
their ANDA Products meet the other limitations of the claims asserted against them. (D.I. 353-1
at ifif 107-17; Tr. 776:11-16; see also PFF344, PFF405). The parties' central dispute is about
how a person skilled in the art would determine the average molecular weight of PEOs in the
context of the patent. It is Reckitt's burden to show that the claimed discrete sets of PEOs are
present in the accused ANDA Products. Reckitt attempts to meet this burden in two ways: First,
by reference to GPC partition analysis, and, second, by reference to Dow's manufacturing
process, arguing that Dow blends PEOs of different molecular weights in manufacturing Polyox

56

N80. (D.I. 397 at 36 & n.12). Reckitt fails to meet its burden under either theory, as discussed
below.
Reckitt obtained the molecular weight distribution of a sample of Polyox N80 to prove
infringement. (Tr. 115:17-119:14, 193:20-194:23). Reckitt's expert, Dr. Yau, used GPC
analysis to determine the molecular weight distribution of the components of a sample of Polyox
N80. (Tr. 119:12-17). Reckitt's GPC analysis showed that the sample of Polyox N80 contained
PEO molecules with a normal distribution of molecular weights. (Tr. 118: 10-122:4, 151 :23153:21, 259:1-12).

N-80 Polyox® MWD Overlay with MW Partition at 600,000 Da
1.20

-----------------------~

1.00

N80Al
•

0.80

N80Bl
N80Cl
N80A2

N80B2
N80C2
N80A3

log(600,000)

N80B3
•

0.40

N80C3

----600,000MW

0.20

"'

\i:.

/

0.00 -i-=-<":::- - - - , - - - - ,------,--- - ----,----'----, ~----,
3.0
3.5
4.0
4.5
6.0
6.5
7.0
5.0
5.5

7.5

LogM

Figure I: PTX526 atp.17

Reckitt's expert, Dr. Mathias, then analyzed the molecular weight distribution Dr. Yau
obtained to determine whether the sample of Polyox N80 contained the claimed low and higher
molecular weight PEOs in the claimed proportion. (Tr. 117:10-118:6, 124:8-129:7, 1277:1657

1279:1). Dr. Mathias mathematically "partitioned" the molecular weight distribution at 600,000
daltons and calculated the average molecular weights of the PEO molecules on each side of the
partition. (Tr. 124:8-130:24, 197:5-199:2; PTX526G; PTX526H; PTX5261; PTX526J). Dr.
Mathias calculated that the viscosity average molecular weight of the low average molecular
weight set of PEO molecules in the sample of Polyox N80 was 95,895 daltons. (PTX5261). Dr.
Mathias also calculated that the low average molecular weight set of PEO molecules made up
98.11 % of the sample. (Id.). Dr. Mathias calculated that the viscosity average molecular weight
of the higher average molecular weight set of PEO molecules in the sample of Polyox N80 was
900,318. (PTX526J). Dr. Mathias also calculated that the higher average molecular weight set
of PEO molecules made up 1.9% of the sample. (Id.). Reckitt maintains that these analyses
prove that Watson's and Par's ANDA Products contain both the low and higher average
molecular weight PEOs as set forth in the PEO limitation; that at least 60% of the polymer
component of Watson's and Par's ANDA Products consist of the low average molecular weight
PEO as set forth in the PEO limitation; and that Watson's and Par's ANDA Products comprise
more than a "stray" amount of higher average molecular weight PEO as required under the
Court's construction of the PEO limitation. (D.I. 397 at 36-37). Thus, Reckitt argues, Watson's
and Par's ANDA Products meet the PEO limitation of the asserted claims of the '150 patent. (Id.
at 35).
Watson and Par argue that a person skilled in the art would determine the average
molecular weight of PEOs in the context of the patent by reference to the commercially reported
average molecular weight. (D.I. 407 at21; D.I. 408 at 10; Tr. 253:5-254:7, 302:21-303:3,
1278:8-21). Watson and Par maintain that, because Polyox N80 is a single PEO, it does not
comprise the "discrete sets of the low average molecular weight PEOs and the high average

58

[molecular] weight PEOs" that the Court ruled must be present in the product. (D.I. 156 at 9;
D.I. 407 at 21; D.I. 408 at 10). Similarly, Watson and Par argue that because Polyox N80 has an
average molecular weight of 200,000 daltons, their ANDA Products do not contain a PEO with a
molecular weight within the range specified in the claims for higher molecular weight PEO.
(D.I. 407 at 21-22; D.I. 408 at 10).
Reckitt's GPC partition analysis does not prove that Watson's and Par's ANDA Products
contain the required "discrete sets" of PEOs because, for the reasons stated above, a person
skilled in the art reading the patent would look to the commercially reported average molecular
weight of PEOs. (See supra Part V.A.2.a; see also Tr. 262:23-263:21, 264:4-19, 457:9-12,
679:15-20; D.I. 156 at 7 (citing D.I. 147 at 48)). Thus, Watson's and Par's ANDA Products
each contain a single, low average molecular weight PEO. Reckitt argues that looking to the
commercially reported average molecular weight of a PEO is improper because it imports a
process step into the asserted claims according to which infringement requires combining two
commercial grades of PEO. (D.I. 411 at 14). I disagree. Finding that the patent uses "molecular
weight" to mean commercially reported average molecular weights does not require that, to
infringe, a party must itself combine two PEOs with different commercially reported molecular
weights within the claimed ranges. Reckitt's GPC partition analysis is also inadequate to prove
that Watson's and Par's ANDA Products contain the required "discrete sets" of PEOs because
Dr. Mathias was unable to articulate any scientific rationale underlying the placement of the
partition at 600,000 daltons. (Tr. 127:12-129:3, 149:6-8, 155:24-159:5, 160:11-161:20, 180:917, 181: 17-183: 12, 185 :3-6). Alternatively, Reckitt argues that Polyox N80 comprises discrete
sets oflow and higher molecular weight PEOs because of blending during manufacturing. (D.I.
397 at 36 & n.12; Tr. 173:16-174:14). Dow's manufacturing process is proprietary and Dr.

59

...

Mathias did not support his opinion that Dow blends discrete sets of PEOs in manufacturing
Polyox N80 with evidence of Dow's manufacturing process. (Tr. 174:15-175:2). Thus,
Watson's and Par's ANDA Products contain a single PEO with a molecular weight of200,000
daltons.
Reckitt argues that Polyox N80 contains the claimed discrete sets of PEOs despite having
a unimodal molecular weight distribution. (D.I. 397 at 38). There is no dispute that Dr. Yau's
GPC analysis yielded a unimodal molecular weight distribution for Polyox N80. (See Tr.
,150:21-151:13). Par's expert, Dr. McConville, testified that, in view of the patent specification,
a person of ordinary skill in the art would recognize a PEO product with a unimodal molecular
weight distribution as a single PEO, rather than more than one discrete sets of PEOs. (Tr.
245:16-247:5, 259:1-6, 260:14--261 :15). He further testified that he would expect the molecular
weight distribution of a sample comprising a discrete PEO oflow molecular weight combined
with another discrete PEO of a higher molecular weight to have a bimodal distribution. (Tr.
246:20-247:5; see Tr. 277:19-282:3). Reckitt argues that a combination of discrete sets of PEOs
could have a unimodal distribution. (D.I. 397 at 38; see Tr. 123:2-124:3; JTX31at3-4). Based
on the evidence presented, I find that a person of ordinary skill would not necessarily expect a
PEO containing one or more low molecular weight PEOs and one or more higher molecular
weight PEOs to have a bimodal molecular weight distribution, but that a bimodal molecular
weight distribution would indicate the presence of discrete sets oflow and higher molecular
weight PEOs.
I find that, although a person of ordinary skill would not necessarily expect a PEO

containing one or more low molecular weight PEOs and one or more higher molecular weight
PEOs to have a bimodal molecular weight distribution, there is nothing about Dr. Yau's and Dr.

60

''•:

Mathias's analyses or Dow's manufacturing process that proves that two discrete sets of PEOs
are present in Polyox N80. Reckitt has therefore failed to establish that Watson's and Par's
ANDA Products contain "one or more polyethylene oxides having a higher average molecular
weight in the range of 600,000 to 900,000." (D.I. 156 at 6). 14 As a result, Watson's ANDA
Product does not infringe claims 1 and 4 and Par's ANDA Product does not infringe claims 10
and 13 of the '150 patent.
For the reasons stated above, I conclude thatthe asserted claims of the '150 patent are
valid but that Watson and Par do not infringe the claims asserted against them.

VI.

CONCLUSION
For the foregoing reasons, the Court finds that: (1) the asserted claims of the '832 patent

are invalid, that Watson's and Par's ANDA Products do not infringe claims 1, 3, and 6 of the
'832 patent, the 12 mg/3 mg dosage strength of Watson's ANDA Product does not infringe
claims 15-19 of the '832 patent, the 2 mg/0.5 mg, 4 mg/1 mg, and 8 mg/2 mg dosage strengths
of Watson's ANDA Product would infringe claims 15-19 of the '832 patent if they were valid,
and that Par's ANDA Product would infringe claims 15-19 of the '832 patent if they were valid;
(2) the asserted claims of the '514 patent are valid and infringed by Watson's and Par's ANDA
Products; and (3) the asserted claims of the' 150 p~tent are valid but not infringed by Watson's
or Par's ANDA Products.
Reckitt is directed to submit an agreed-upon form of final judgment.within two weeks.

14

Because I conclude that a person of ordinary skill in the art would look to the commercially reported average
molecular weight rather than GPC partition analysis to determine whether a product satisfies the' 150 patent claim
limitations, I do not reach Watson's and Par's arguments that even under the partition analysis, Reckitt failed to
prove that Watson's and Par's ANDA Products contain more than "stray" amounts of higher molecular weight PEO
or that the viscosity average molecular weights calculated using GPC partition analysis fall within the claimed
ranges. (See D.I. 407 at 23-24; D.I. 408 at 13-15). Consequently, I also do not reach Reckitt's argument in the
alternative that the viscosity average molecular weights calculated using GPC partition analysis are equivalent to the
claimed ranges under the doctrine of equivalents. (See D.I. 397 at 42; D.I. 411 at 15).

61