SEPRACOR INC. v. TEVA PHARMACEUTICALS USA, INC. et al

Filing 479

OPINION. Signed by Judge Dennis M. Cavanaugh on 1/17/13. (gmd, )

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

SUNOVION PHARMACEUTICALS
INC..

Hon. Dennis M. Cavanaugh
OPINION

Plaintiff,
Civil Action No, 09-cv-0 1302 (DMC)(MF)
V.

TEVA PHARMACEUTICALS USA,
INC. et at.,
Defendants,

DENNIS M. CAVANAUGH, U.S.D.J.:
This matter comes before the Court upon Defendants Dr. Reddy Laboratories.

s and Dr.

Reddv’s Laboratories, Inc.’s (collectively “Defendants” or “DRL”) Renewed Motion for Summary
Judgment of Non-Infringement of U.S. Patent No, 6,444,673 (the “673 Patent”), pursuant to FED. R.

Civ. p. 56. (ECF No. 448).

Pursuant to FED. R. Civ. P. 78, no oral argument was heard. After

carefully considering the submissions of the parties, and based upon the following, it is the finding of
this Court that Defendants’ Renewed Motion for Summary Judgment is granted.
1.

1
B.ckGROuND

The instant suit arises out of the alleged infringement of Plaintiff Sunovion Pharmaceuticals
Inc.’s (“Plaintiff” or “Sunovion”) patents for eszopiclone, used to market the sleep medication

The facts set-forth

in this Opinion are taken from the Parties’ statements in their respective moving papers.

Lunesta

.

Eszopiclone is the active ingredient in Lunesta® and is the ‘dextrorotatorv” or

isomer of a compound known as zoplicone. (Pl.’s Opp. Br. 2, Nov. 17, 201 1, ECF No. 386). Zopiclone
consists of a mixture of two isomers, the levorotatory isomer (also known as the ‘R-isomer” or “1isomer”) and the dextrorotatory isomer (known as the S- or d-isomer). U.S. Patent Numbers 6.319.926
(‘the 926 Patent”), 6,444,673 (the “673 Patent”). 6,864.257 (“the 257 Patent”). and 7.381.724 (“the
‘724 Patent”) are assigned on their face to Sepracor, Inc. and generally cover eszopiclone “essentially
free” of its other ‘(-) isomer” as well as formulations of and methods of administering the same. (Pl.’s
Opp. Br. 2). Each of the aforementioned patents belong to the same patent family and share the same
specilication. although the ‘673 Patent alone is at issue in the instant matter.
The ‘673 Patent issued with eight claims, three of which (claims 1. 2. and 8) Sunovion asserts
against DRL. Sunovion alleges that DRL infringed these claims with the filing of an Abbreviated New
Drug Application (“ANDA”) on December 15, 2008, seeking approval from the Food and Drug
Administration (“FDA”) to market DRL’s eszopiclone 1 rng. 2 mg. and 3 mg tablets as generic versions
of Sunovion’s Lunesta®. (Defs.’ Mot. Br. 8. Oct. 13, 2011. ECF No. 372). On October 13, 2011.
Defndants filed a Motion for Summary Judgment of Non-Infringement of asserted claims 1, 2, and 8,
claiming the then-existing ANDA did not infringe upon Sunovion’s ‘673 Patent. (Defs.’ Mot. Br. 8).
A Markman Hearing was held on February 22, 2012 and, in an April 10, 2012 Opinion, this
Court construed the term “essentially free” to mean less than 0.25% of [its/the] levorotatory isomer.”
(.hfarkmun Opinion and Order 1 3, April 10, 2012, ECF Nos. 41 7. 418). After finding no plain meaning
for the term “essentially free” and upon consideration of the prosecution history of the ‘673 Patent, this

The
2 instant suit was originally filed by Sepracor. Inc. on March 20. 2009. On October 12. 2010, Sepracor
Inc. changed its name to Sunovion Pharmaceuticals Inc. The caption has been i’evised to reflect this change. All
references made to Plaintiff herein will be made to Sunovion.

2

Court determined that the record evidence supported the 0.25 percent claim construction. (Markinan
Opinion 6-7).
DRL’s original eszopiclone ANDA provided for an R-isomer specification of “not less than
0.3% and not more than 1.0%.” ($.çç Pl.’s Opp. Br. 12, Nov. 17, 2011, ECF No. 386). DRL received
a deficiency from the FDA in regards to that application and its subsequent proposal requested the
specification for the levorotatory content in its drug product and drug substance be revised to not more
than 1.0 percent. (Pl.’s Opp. Br. 12). The FDA recommended further “tightening” of the R-isomer
limit. (Pl.’s Opp. Br. 13). The FDA has expressed that setting the limit between 0.3 percent and 1.0
percent is “not acceptable.” (Pl.s Opp. Br. 13). The limits were later restricted to the 0.0 percent to 0.6
percent in a revised ANDA submitted to the FDA on April 26, 2012.
On May 25, 2012, this Court denied DRL’s Motion for Summary Judgment of Non
Infringement without prejudice and permitted DRL to file a renewed motion accompanied by a
certification assuring this Court DRL would not market a product containing less than 0.3 percent of
the levorotatory isomer of eszopiclone (“May 25th Order”). (ECF No. 437). DRL has subsequently
submitted a certification stating it will not market an eszopiclone tablet with an levorotatory isomer
content below 0.3 percent. (Nicholas Cappuccino, Ph.D. Certification (“the Certification”), June 8,
2012, ECF No. 449). The May 25th Order also prevented further briefing and declared that the
Renewed Motion for Summary Judgment would be decided upon consideration ofthe Certification and
the motion papers already before the Court. Sunovion previously moved for this Court to reconsider
certain portions of the May 25th Order, specifically parts ofthe Order suggesting that the Certification
by DPI providing it will not market generic eszopiclone tablets containing less than 0.3 percent
levorotatory isomer would be sufficient to avoid infringement. In a opinion dated December 14,2012,
3

this Court denied Sunovion’s Motion for Reconsideration. This Court now considers DRL’s Renewed
Motion for Summary Judgment of Non-Infringement of the ‘673 Patent.
H.

STANDARD OF REvIEw

Summary judgment is granted only if all probative materials of record, viewed with all inferences
in favor of the non-moving party, demonstrate that there is no genuine issue of material fact and that
the movant is entitled to judgment as a matter of law. FED. R. Civ. P. 56(c); Celotex Corp. v. Catrett.
477 U.S. 317, 330 (1986). The moving party bears the burden of showing either (1) there is no genuine
issue of fact and it must prevail as a matter of law; or (2) that the non-moving party has not shown facts

relating to an essential element of an issue for which he bears the burden. Celotex, 477 U.S. at 331.
If either showing is made then the burden shifts to the non—moving party. who must demonstrate lhcts

that support each element for which he bears the burden, as well as the existence of genuine issues of
material fact. Id. A material fact is one that might affect the outcome of the case. and summar
judgment will not lie if the dispute about a material fact is ‘genuine,’ that is, if the evidence is such that
a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby. Inc.. 477
U.S. 242, 248 (1986).
The Court will consider all facts and their reasonable inferences in the light most favorable to the
non-moving party. See Penn. Coal Ass’n v. Babbitt, 63 F.3d 231, 236 (3d Cir. 1995); Newsome v.
Admin, Oflice ofthe Courts ofthe State ofN.J.. 103 F. Supp.2d 807, 815 (D.N..T. 2000). aff’d. 51 Fed.
App

‘

76 (3d Cii 2002) (citing Watts

Um of Del 622 F 2d 47 50 (D N 1 1980)) \\ hilc a cow

must draw reasonable inferences in the light most favorable to the non-moving party, the non-moving
party “may not rest upon the mere allegations or denials of his pleading” to satisfy this burden, and
rather must produce sufficient evidence to support ajury verdict in his favor. gg FED. R. Civ. P. 56(e)
4

see also Matsushita Flee. Indus. Co. v. Zenith Radio Co.. 475 U.S. 574. 586 (1986). “[U]nsupported
allegations in memorandum and pleadings are insufficient to repel summaryjudgment.” Schoch v. First
Fid. l3ancorporation, 912 F.2d 654, 657 (3d Cir. 1990), and conclusory allegations are insufficient to
establish genuine issues of fact. Luian v. Nat’l Wildlife Fed’n. 497 U.S. 871. 902 (1990). The nonmoving party “must do more than simply show that there is some metaphysical doubt as to the material
facts.” Matsushita Elec. Indus. Co., 475 U.S. at 586.
ilL

DISCUSSION

A.

CLAIM

CoNsTRUcTIoN LEGAL STANDARDS

Claim construction is a question of law.

Markman v. Westview Instruments. Inc.. 517 U.S.

370 (1996). In interpreting a patent claim, the court should look first to the intrinsic evidence of record
(i.e., the patent itself). Vitronics Corp. v. Conceptronic. Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996).
The Federal Circuit has established an analytical framework for analyzing the scope and meaning of
disputed claim terms.

Phillips v. AWH Corp.. 415 F.3d 1303 (Fed. Cir. 2005). “It is a ‘bedrock

principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled
the right to exclude,” j at 1312 (citation omitted). The words contained in the claim are “generally
given their ordinary and customary meaning.

.

.

to a person of ordinary skill in the art in question at the

time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, at 1 3 1 2—1 3
(citations and internal quotations omitted). In addition to the claim language. the patent specihcalion
“‘is always highly relevant to the claim construction analysis.” Phillips. 415 F.3d at 1315 (citation
omitted).
The prosecution history should also be considered because it can show “how the [Patent and
Trademark Office] and the inventor understood the patent.” Phillips. 415 F.3d at 1317. Prosecution

)

history is illustrative of ‘the course of dealing with the Patent Office, which may sho\ a particular
meaning attached to the terms, or a position taken by the applicant” to secure the patent. Markman

‘.

Westview Instruments, Inc., 52 F.3d 967. 991 (Fed. Cir, 1995), affd, 517 U.S. 370 (1996).
B.

INFRINGEMENT LEGAL STANDARDs

1.

Literal Infringement

Literal infringement requires a showing that each limitation set forth in a claim appear in the
accused product. Franks Casing Crew & Rental Tools, Inc. v. Weatherford Intl. Inc.. 389 F.3d 1370.
137$ (Fed. Cir. 2004) Forest Labs., Inc. v. Abbott Labs.. 239 F.3d 1305. 1310 (Fed.Cir.2001). If e en
one limitation is missing in the accused product, there is no literal infringement. $çg T)ollv. Inc. v.
Spaulding & Evenflo Cos., 16 F.3d 394, 397 (Fed.Cir.1994); Krafl Foods, Inc. v. intl Trading Co., 203
F.3d 1362, 1370 (Fed.Cir,2000).
2.

Doctrine of Equivalents

The doctrine of equivalents allows a plaintiff to establish, in certain instances, that a claim
element, though not literally present, is nevertheless met by demonstrating that the missing element has
been replaced by a structure that performs the same function in the same way to achieve the same result
as the claim element in the patented device. Sçç e.g., Warner—Jenkinson Co. v, Hilton Davis Chem.

Co., 520 U.S. 17, 35 (1997). The doctrine of equivalents, however, is an ‘cquitable” tool that is
applicable “only when the changes [in the accused productj are so insubstantial as to result in a fraud
on the patent.” Slimfold Mfg. Co. v. Kinkead Indus.. Inc., 932 F.2d 1453. 1457 (Fed.Cir.1991).
There are several well-settled limitations to the application of the doctrine of equivalents. First. the
doctrine of prosecution history estoppel serves to presumptively bar the doctrine ol equivalents for
claim limitations that were narrowed during prosecution for reasons related to patentability. gg. g.
6

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co,, 535 U.S. 722, 741 (2002). Second, the
doctrine of equivalents cannot be used to encompass prior art or if the application of the doctrine would
read an element out of the claim language.

Warner—Jenkinson. 520 U.S. at 33—40: Marguip. Inc.

v.Fosber Am,, Inc., 198 F.3d 1363, 1367 (Fed.Cir.1999). Furthermore, the patentee hears the burden
of proving infringement

.

.

.

and [the patentee] is responsible for [any] shortcoming” in the evidence

regarding the accused products.”

$ Ultra—Tex Surfaces, Inc. v. Hill Bros. Chem. Co.. 204 F.3d

1360.

1364 (Fed.Cir.2000).
C.

Claim Construction of Disputed Terms

As several Defendants have already withdrawn from this matter, there remained only one disputed

term for the Court’s construction, namely the “essentially free” claim term. In its Markman decision.
this Court determined the purity level claimed by the patents-in-suit by construing the term ‘essentially
free.”

The Court found that no plain meaning for the term “essentiaIl O’ee

Opinion 5. Apr. 10. 2012. ECF No. 417).

existed. (lIarkniaii

It was undisputed that neither the claims nor the

specifications of the patents defined the degree of purity of the d-isomer of zopiclone composition that
was “essentially free” of the levorotatory isomer, thus this Court turned to the to the prosecution history
of the patents-in-suit to properly construe the disputed term. (Marknian Opinion 5). This Court

concluded that the term “essentially free” is properly de1ned as ‘less than 0.25% of lits/thel
lcvorotatory isomer.” (Alurkinan Opinion 5).
D.

Summary Judgment of Non-Infringement

Having construed the disputed term, the Court now turns to whether DRL’s formulation falls
within its scope. The ultimate burden of proving infringement rests with the patentee. Thus, “an
accused infringer seeking summary judgment of non-infringement may meet its initial responsihilit
7

either by providing evidence that would preclude a finding of infringement, or by showing that the
evidence on file fails to establish a material issue of fact essential to the patentee’s case.” Novartis
Corp. v. Ben Venue Laboratories, Inc.. 271 F. 3d 1043, 1046 (Fed. Cir. 2001).
it is an act of infringement to submit an ANDA “if the purpose of such a submission is to obtain
approval

.

.

.

to engage in the commercial manufacture, use, or sale of a drug

.

.

.

claimed in a patent

or the use of which is claimed in a patent before the expiration of such patent.”

35 U.S.C.

271(e)(2)(C)(iii). However, the scope of the ANDA is not the sole factor in an infringement analysis
and does not alter a patentee’s normal burden of proving infringement. Glaxo, Inc. v. Novopharm, Ltd..
110 F.3d 1 562, 1 567 (Fed. Cir. 1997). The relevant inquiry centers upon “whether the patentee has
proven by a preponderance of the evidence that the alleged infringer will likely market an infringing
product,” Glaxo, Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1570 (Fed. Cir. 1997); Bayer AG v. Elan
Pharmaceutical Research Corp., 212 F.3d 1241, 1248 (Fed. Cir. 2000) (citing 35 U.S.C.
27 1 (e)(2)(A)). This inquiry depends upon a determination of “[w]hat is likely to he sold. or. preferably.
what will be sold, will ultimately determine whether infringement exists.” Glaxo. Inc. v. Novopharm.
Ltd., 110 F.3d 1562, 1 570 (Fed. Cir. 1997). A court may properly consider the ANI)A itself. materials
submitted by the ANDA applicant in support of the ANDA. and any additional relevant material
submitted by the applicant or the patent holder. Bayer AG, 212 F.3d at 1248-49.
DRL tiled its Renewed Motion for Summary Judgment for Non-Infringement on the grounds that
DRL s proposed range for which it is seeking FDA approval was outside the purit range claimed by
Sunovion’s patents. Claims 1, 2, and 8 of the ‘673 Patent refer to a composition “essentially free ol

8

its levorotatory isomer.” Sunovion argues that “speculation about what [thel FDA may or may not do
3
in the future is insufficient to establish undisputed facts in support of summary judgment.
Br. 1 8).

Sunovion asserts summar judgment is precluded based on the

uncertainty

(P1’s Opp.

that exists as to

whether the FDA will accept DRL’s proposed R-isomer specifications and previous rejections ofDRL’s
specifications by the FDA. (Pl.’s

Opp. Br.

18, 20). This Courts analysis, however, centers around a

determination of whether DRL would likely sell an infringing composition pursuant to an approved
ANDA. e Glaxo. Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1570 (Fed. Cir, 1997). At the
onginal summaiy judgment

motions

time

weic filed, DRI ‘s ANDA as pcnding beloic thc, FDA

the
Jo

supplement its ANDA, DRL submitted an eszopiclone Drug Master File containing two alternate
proposed specifications. DRL’s first proposed specification indicated that the content of the R-isomer
will be between 0.3 percent and 1.0 percent. DRL’s alternate proposed specification provided that the
content of R-isorner will be Not More Than C’NMT”) 1.0 percent. DRL

maintains

that both proposed

specifications support a defense of non-infringement. (Defs.’ Mot. Br. 6-7). According to DRL. even
if the alternate proposed specification is adopted by the FDA, DRL’s tablets will still be outside the
in&inging range of less than 0.25 percent ofthe R—isomer, in accordance with this Court’s construction
of the ‘essentiallv free” claim term.

(4. at 7;

Claims 1,2. and 8 of the ‘673 Patent read

Cappuccino Certification

14). DRL claims this is so

as thilows:

1. 6-(5-chloro-2-pyridyl)-5-[(4-methyl-1 -piperazinyl) carbonyloxy]-7-oxo-6, 7 dihydro-5H-pyrrolo[3,4-b]
pYrazine, or a pharmaceutically acceptable salt thereof in the form of its dextrorotatory isomer and
essentially free of its levorotatory isomer.
2. A pharmaceutical composition comprising an effective amount of the dextrorotatory isomer. essentially
c of tht. lcvot otitoi isomer ot 6 ( chlot o 2 p i id 1) [(4 mcth ii pip.i izim l c trboim lo\\ 1 7 o\o
6,7-dihvdro-51-l-pvrrolo [3 ,4-blpyrazine, or a pharmaceutically acceptable salt thereol, and a
pharmaceutically acceptable carrier,
‘

8. The pharmaceutically composition according to claim 2, wherein the pharmaceutically acceptable carrier
compromises a diluent.

9

because the specific process employed, known as Process I, results in an eszopic lone product having
an R-isorner content of between 0.3 percent and 0.6 percent. (Def.s Mot, Br, 7, Oct. 13, 2011, ECF No,

372; Cappuccino Cert.

¶

14).

l)RL concedes that DRL’ s Drug Master File also supports an alternative manufacturing process.
known as ‘Process IL which utilizes additional steps to yield eszopiclone with an R-isomer content
below 0.3 percent. (Cappuccino Cert.

¶

14). According to DRL, this process is exclusively used to

manufacture a product for a third party and DRL has certified it will not market an eszopicione tablet
with a levorotatory isomer content below 0.3 percent. (Cappuccino Cert.

¶J 17). Both internal

regulations and the Certification preclude DRL from marketing a product made using Process 11 and
marketing a tablet with a levorotatorv isomer content under 0.3 percent.
DRL’s ANDA specification and other materials it has submitted to the FDA in connection to
its ANDA demonstrate the process used to manufacture DRL’s eszopiclone create a product having an
R-isomer content of not less than 0.3 percent and not more than 1.0 percent. (See
Cert.

¶JJ

5, 6; Product Specification, Oct. 13, 2011, ECF No. 374 1. Exh. 1).

Cappuccino
DRL’s release

specitications similarly require that DRL’s eszopiclone tablets and API have an R-isomer content of
between 0.3 percent and 1 .0 percent. (5,g e.g., Cappuccino Cert. ¶13; DRL Finished Product Release
Specification. Oct. 13, 2011. ECF No. 374-2, pp 5, 9). The batch records submitted b DRL with the
ANDA show R-isomer contents between 0.31 percent and 0.91 percent. (5e [)RL’s FDA Letter of
Eszopiclone Batches Trend, Oct. 13, 2011. ECF No. 374-1, Exh. 8, pp 38-40). Even if the FDA
approves DRL’s alternate proposed specification that the content ofthe R-isomer will remain NMT 1.0
percent, the product marketed would remain outside the infringing range of less than 0.25% of [its/the]
levorotatorv isomer. The ANDA must be judged on its face for what an accused infringer seeks the
10

FDA’s approval to do” and that the ANDA remains under review does not create a material issue of

disputed fact as to the eszopiclone product DRL is seeking approval to market. e Warner-Lambert
Co. v. Apotex Corp.. 316 F.3d 1348, 1364 (Fed. Cir. 2003). The eszopiclone product produced and
marketed by DRL will be the same in either potential approval situation, and contain between 0.3
percent and 1.0 percent of the R-isomer. In considering the ANDA, material submitted by DRL to the
FDA. and “other pertinent evidence provided by the parties.” this Court concludes it has not been
shown by a “preponderance of the evidence that the alleged infringer will likely market an infringing

product.”

Glaxo, Inc. v. Novopharm. Ltd., 110 F.3d 1562, 1570 (Fed. Cir, 1997).

In cases where literal infringement is not shown. the doctrine of equivalents may be utilized to
demonstrate infringement. Mosaid Technologies Inc.. 262 F. Supp. 2d at 533. An accused product may
infringe under the doctrine of equivalents if”it performs substantially the same function in substantially
the same way to obtain the same result,” Southwall Technologies, Inc.. v. Cardinal IG Company, 54
F. 3d 1570. 1579 (Fed. Cir. 1995) (citing Graver Tank & Mftt. Co. v. Linde ;\ir Prods. Co.. 339 [.5.
605, 608 (1950)). The doctrine of equivalents, however, is not a tool for expanding the protection ol
a patent after examination has been completed. Hormone Research Foundation, Inc. v, Genentech, Inc.,
904 F.2d 1558. 1564, 15 USPQ2d 1039, 1044 (Fed.Cir.1990).

Thus, prosecution history estoppel

limits the range of equivalents available to a patentee by preventing recapture of subject matter
surrendered during prosecution of the patent. Townsend Engg Co. v. HiTec Co., 829 F.2d 1086, 1090,
4 l’SPQ2d 1136, 1139 (Fed.Cir.1987).
Here, there is no possible equivalent under the doctrine of equivalents. In no case can “the

doctrine of equivalents ignore the individual claim elements,” Abbott Laboratories v. Sandoz, Inc., 566
F.3d 1282, 1297 (Fed. Cir. 2009) (citing Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.s.
11

1 7. 40 (1 997)). Equivalency for purposes of patent infringement requires an element-by-element
comparison looking for equivalent function, way, and result, j Though Sunovion has provided data
suggesting DRL’s product will benefit the end user in a manner that is substantially similar to
Sunovion’s Lunesta®, this is insufficient to support a finding that Sunovion is entitled to equivalents
to the essential1y free” limitation above 0.3 percent of the R-isomer. Sunovion may not now attempt
to broaden statements made during the prosecution leading to the issuance of the ‘673 Patent. $e
Phaimacia & Upiohn Co v Mylan Pharms mc, 170 F 3d 1373, 1376-77 (Fed Cir 1999) As the
asserted claims ol the ‘673 Patent require eszipoclone which is “essentially free” of the R-isomer,
construed as less than O.25% of [its/the) levorotatorv isomer and as DRL’s ANDA and API product will
demonstrably contain a 0.3 percent to 1 .0 percent R-isomer content, DRL will not infringe either
literally or under the doctrine of equivalents.

IV.

CoNcLusIoN

For the reasons stated, it is the finding of this Court that Defendants’ Motion for Summary
Judgment is granted. An appropriate Order

,1l7//3
Orig.:
cc:

Clerk
Hon. Mark Falk, U.S.M.J.
All Counsel of Record
File

12