Forest Laboratories LLC et al v. Sigmapharm Laboratories LLC

Filing 133

MEMORANDUM ORDER re: claim construction. Signed by Judge Sue L. Robinson on 1/29/2016. (nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

FOREST LABORATORIES LLC and
)
FOREST LABORATORIES HOLDINGS LTD., )
)
Plaintiffs,
)
)
v.
)
)
)
SIGMAPHARM LABORATORIES LLC,
)
HIKMA PHARMACEUTICALS LLC,
)
HIKMA PHARMACEUTICALS PLC,
WEST-WARD PHARMACEUTICALS CORP., )
BRECKENRIDGE PHARMACEUTICAL INC., )
)
ALEMBIC PHARMACEUTICALS LTD.,
)
ALEMBIC GLOBAL HOLDING SA,
ALEMBIC PHARMACEUTICALS INC., and
)
AMNEAL PHARMACEUTICALS LLC,
)
Defendants.

Civ. No. 14-1119-SLR-SRF

)
)

MEMORANDUM ORDER
At Wilmington thisd'\rday of January, 2016, having heard argument on, and
having reviewed the papers submitted in connection with, the parties' proposed claim
construction;
IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 5,763,476,
(the '476 patent), 7,741,358 (the '358 patent), and 8,022,228 (the '228 patent) shall be
construed consistent with the tenets of claim construction set forth by the United States
Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005), as follows:

The '476 Patent
1.

"Tension, excitation, anxiety, and psychotic and schizophrenic

disorders:" 1 "The preamble is a limitation, and does not include bipolar disorder,
including manic or mixed episodes associated with bipolar I disorder." The word
"bipolar" is not found in the claims or specification. 2 Nonetheless, bipolar disorder was
known at the time, evidenced by applicants' separate patent application (No.
11/247,342) for the treatment of bipolar disorder with asenapine, specifying a "new
therapeutic use[] for ... asenapine, that [is] different from the [c]ertain treatments
... disclosed in U.S. Patent No. 4, 145,434 and 5,763,476." (D.I. 58, ex. 5, U.S. App. No.
11/247,342 at 1-2). Moreover, the examiner recognized that the '476 patent did not
include treatment of bipolar disorder, stating "Delbressine et al. [the '476 patent] do[es]
not however teach the use of asenapine for treating bipolar disorder or its symptoms or
the use of asenapine for stabilizing mood." (D.I. 58, ex. 6 at. 9) Finally, relying on
definitions from the same medical diagnostic manual as plaintiffs' expert, namely the
DSM-IV, defendants' expert, Dr. Frazer, differentiates bipolar disorder as a separate
disorder from the psychotic and schizophrenic disorders disclosed in the '476 patent.
Bipolar disorder is characterized as a "mood disorder," separate and apart from
schizophrenia and psychotic disorders. (D.I. 58, ex. 1 at

1

,m 24-27)

Found in claim 4.

2

There is no mention of "bipolar" as related to the disease. The specification does
include the phrase "bipolar limb leads," referring to an electrocardiographic conductor
used in testing a dog under anesthesia. (4:63-64)

2

2.

"Administering sublingually or buccally:" 3 "Administering beneath the

tongue or adjacent to or in the direction of the cheek." The parties agree that,
consistent with the plain and ordinary meaning according to one of ordinary skill in the
art, "sublingually or buccally" indicates administering or inserting the dosage form under
the tongue or in the direction of the cheek/buccal pouch. (D.I. 53 at 11; D.I. 58 at 6) A
construction requiring an "aqueous solution" or "rapidly disintegrates" is improper under
the doctrine of claim differentiation. Claim 9, which depends from claim 4, explicitly
recites "a solid pharmaceutical composition which rapidly disintegrates in the mouth of a
subject upon insertion into the buccal pouch or upon placement under the tongue."
(6:40-42) There is no basis to read such limitations into claim 4. Versa Corp. v. AgBag Int'/ Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) ("The doctrine of claim

differentiation 'create[s] a presumption that each claim in a patent has a different
scope.'") (citation omitted); N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571,
1577 (Fed. Cir. 1993) ("The dependent claim tail cannot wag the independent claim
dog."). Additionally, a construction encompassing an "aqueous solution" would limit
claim 4 to the preferred embodiment in the specification. Falana v. Kent State Univ.,
669 F.3d 1349, 1355 (Fed. Cir. 2012) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1327-28 (Fed. Cir. 2002) ("[T)his court has 'cautioned against limiting the
claimed invention to preferred embodiments or specific examples in the
specification."')); Philips Elecs. N. Am. Corp. v. Contee Corp., 312 F. Supp. 2d 592, 599
(D. Del. 2004) ("[l]t is well settled that limitations from the preferred embodiment cannot
be read into the claims.").

3

Found in claims 4 and 13.

3

3.

"A solid pharmaceutical composition which rapidly disintegrates:" 4

"A solid pharmaceutical composition which disintegrates within 30 seconds in water at
37° C as measured according to the procedure described in either Remington's
Pharmaceutical Sciences, 18th Edition (Ed. A. R. Genaro), 1990, pp. 1640-1641 or US
Pharmacopeia, Chapter <701 >." The specification provides an express definition of the
term "rapid disintegration" as follows: "[r]apid disintegration means that the
pharmaceutical composition is disintegrated within 30 seconds in water at 37° C., and
preferably within 10 seconds, as measured according to the procedure described in
Remington's Pharmaceutical Sciences, 18th Edition (Ed. A. R. Genaro). 1990. pp 16401641; see also US Pharmacopeia, Chapter <701 >." (1 :59-65) Because the
specification provides an express definition, that definition will be adopted. Phillips, 415
F.3d at 1316.

The '358 Patent
4.

"Orthorhombic"/"Orthorhombic crystalline form" 5/"0rthorhombic

crystal form" 6 "Asenapine maleate crystalline form characterized by at least one of
the following: the XRPD pattern at Fig. 1 (lower pattern), the Raman spectra at Fig. 2
(lower spectrum), a melting point in the range of 138-142° C, the unit cell as reported in
Table 1A and the atomic positions as reported in Table 1B." Plaintiffs proffer the
following construction: "a crystalline form of asenapine maleate, distinguishable from
the monoclinic form, that can be characterized by several analytical techniques known

4

Found in claim 9.

5

Found in claim 1.

6

Found in claim 1 of the '228 patent which shares a specification with the '358
patent. All references in this paragraph are to the '358 patent.

4

in the art such as Infrared Spectroscopy, Raman Spectroscopy, Solid State Nuclear
Magnetic Resonance Spectroscopy, Differential Scanning Calorimetry, X-ray powder
diffraction patterns (XPRD) and many others. Such techniques may be applied
individually or in combination." However, a construction that merely characterizes a
substance by listing techniques which could be used to characterize it, without any
information concerning what findings would confirm the presence of the orthorhombic
crystal form, does not sufficiently define it. Ultimately, plaintiffs' proposed construction
would include any asenapine maleate polymorph that was not the monoclinic form,
failing to limit the substance to the particular orthorhombic crystal form that is the
purported invention of the '228 and '358 patents. (D. I. 88, ex. 3 at 113:20-21) While the
specification is clear that the orthorhombic crystal form is "characterized, and thus
distinguished from the monoclinic form, by several analytical techniques known in the
art" (3: 19-22), the specification continues to identify particular results, using a number of
different techniques that further characterize the claimed polymorph. (3:27-5:14)
Consistent with the court's construction as set forth above, the specification recites that
"techniques may be applied individually or in combination" (3:25-26) as follows: "the
orthorhombic form is characterized by" listed peaks on an XRPD pattern (3:36-40);
crystallographic data of the orthorhombic form "are shown in Tables 1a and 1b" (3:5152); "the crystalline asenapine maleate prepared according to the invention ... has a
melting point in the range of 138-142° C" (3:16-18); and "the orthorhombic form is
characterized by" listed Raman spectra peaks (5:7-12).

5

5.

"Isolated in a form which contains at least about 90 wt. % of the

orthorhombic crystalline form:" 7 "At least about 90 wt. % of the asenapine maleate
is in the orthorhombic crystal form." The specification recites that "[t]he present
invention provides an orthorhombic form of asenapine maleate, which through the use
of a special crystallization technique, can be prepared in a highly pure form" (2:53-55),
indicating that the basis of the invention is the ability to manufacture and consistently
formulate a substance that is at least about 90 wt.% pure. Moreover, the specification is
devoid of any indication that the "highly pure form" of orthorhombic asenapine maleate
can be mingled with an unlimited amount of non-crystalline asenapine maleate and
remain pure.
Additionally, claim 1 recites an isolated form of orthorhombic crystalline material.
(1 :4-5) (emphasis added) The specification refers to the term "isolated" when
describing the product of a re-crystallization experiment as follows: "[a]senapine
maleate was isolated by filtration and washed with a 1: 1 mixture of acetone and
heptanes (30 kg) cooled to 10° C. The material was thereafter dried. The yield was 9096%. XRPD analysis showed that >95% orthorhombic form was obtained." (9:44-48)
Notably, the specification indicates that "asenapine maleate" was isolated, rather than
"crystalline" asenapine maleate. This finding of >95% purity is indicative of the amount
of orthorhombic crystals compared to the yield of asenapine maleate. 8

7

Found in claim 1.

8

During the claim construction hearing, defendants argued that plaintiffs' construction
could lead to a composition of 10 mg of asenapine maleate that fits within the definition
of the term, but comprises a ratio of 50% orthorhombic, 45% non-crystalline, and 5%
monoclinic. While this composition fits within the definition, the composition is not the
same product contemplated by the patent. In other words, plaintiffs' construction is only

6

The '228 Patent

6.

"The compound trans-5-chloro-2,3,3a, 12btetrahydro-2-methyl-

1Hdibenz[2,3:6,7]oxepino[4,5-c]pyrrole(Z)-2-butenedioate" and "microcrystalline:" 9

"the compound asenapine maleate wherein the compound comprises particles having a
size distribution characterized by a d95 of 30 µm or less and is in the orthorhombic
crystal form." The specification provides that "[t]he present invention provides an
orthorhombic form of asenapine maleate, which through the use of a special
crystallization technique, can be prepared in a highly pure form." (2:65-67) Furthermore,
"one aspect of the invention provides an orthorhombic crystalline form of asenapine
maleate, which contains 10% or less of another crystalline form, 5% or less of another
crystalline form, or no detectable amount of another crystalline form, respectively. (3:813) Finally, "[a]nother aspect of the invention provides an orthorhombic crystalline form
of asenapine maleate that is microcrystalline. Here the term 'microcrystalline' means
that the form comprises particles having a size distribution characterized by a d95 of30
µm or less." (3:13-17)
7.

The court has provided a construction in quotes for the claim limitations at

issue. The parties are expected to present the claim construction to the jury consistently
with any explanation or clarification herein provided by the court, even if such language
is not included within the quotes.

UnitedStatDiStriciJUdge
valid in the narrow circumstance that the orthorhombic crystalline form is composed of
pure crystal.
9

Found in claim 1.

7