Mylan Pharmaceuticals Inc.v.Nissan Chemical Industries, Ltd.

Patent Trial and Appeal Board

Oct 20, 2015

07883398 (P.T.A.B. Oct. 20, 2015)

Trials@uspto.gov Paper 24
Tel: 571-272-7822 Entered: October 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MYLAN PHARMACEUTICALS INC.,
Petitioner,

v.

NISSAN CHEMICAL INDUSTRIES, LTD.,
Patent Owner.
____________

Case IPR2015-01069
Patent 5,856,336
____________

Before JACQUELINE WRIGHT BONILLA, SHERIDAN K. SNEDDEN,
and TINA E. HULSE, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Mylan Pharmaceuticals Inc. (“Petitioner”) filed a Petition to institute
an inter partes review of claims 1 and 2 (Paper 2; “Pet.”) of U.S. Patent No.
5,856,336 B2 (Ex. 1001; “the ’336 patent”). Nissan Chemical Industries,
Ltd. (“Patent Owner”) filed a Patent Owner Preliminary Response. Paper 7
(“Prelim. Resp.”).
Upon consideration of the Petition and Patent Owner Preliminary
Response, we conclude that Petitioner has not established that there is a
reasonable likelihood that it will prevail with respect to at least one of the
challenged claims. For the reasons that follow, we do not institute an inter
partes review.
A. Related Proceedings
The parties inform us of the following related litigation between them
involving the ’336 patent: Kowa Company, Ltd. v. Mylan, Inc., 1:14-cv-
02647 (S.D.N.Y. Apr. 14, 2014). Pet. 1; Paper 5.
B. The ’336 patent (Ex. 1001)
The ’336 patent discloses mevalonolactone derivatives having a
quinoline ring and their use as a pharmaceutical for reducing hyperlipidemia,
hyperlipoproteinemia or atherosclerosis. Ex. 1001, 1:635.
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C. Challenged Claims
Challenged claims 1 and 2 are reproduced below:

1. A compound of the formula,

Z= —CH(OH)—CH2—CH(OH) —CH2—COO. ½Ca.

2. A method for reducing hyperlipidemia, hyperlipoproteinemia
or atherosclerosis, which comprises administering an effective
amount of the compound of formula A as defined in claim 1.
D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1 and 2 of the ’336 patent on the
following grounds. Pet. 1660.
Reference[s] Basis Claims Challenged
Kathawala,
1
Kathawala Abstract,
2

Hoefle,
3
Roth,
4
Anderson,
5
Wareing,
6

Hansch,
7
Suh,
8
Berge,
9
and Gould
10

§ 103 1 and 2

1
U.S. Patent No. 4,739,073, issued Apr. 19, 1988. Ex. 1010.
2
Faizulla G. Kathawala, et al., XU 62-320, An HMG-CoA Reductase
Inhibitor, More Potent Than Compactin, Abstract for American Chemical
Society library, July 29, 1987 (hereinafter “Kathawala Abstract”). Ex. 1009.
3
U.S. Patent No. 4,647,576, issued Mar. 3, 1987. Ex. 1016.
4
U.S. Patent No. 4,681,893, issued July 21, 1987. Ex. 1019.
5
U.S. Patent No. 4,751,235, issued June 14, 1988. Ex. 1020.
6
U.S. Patent No. 4,613,610, issued Sept. 23, 1986. Ex. 1018.
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Reference[s] Basis Claims Challenged
Kathawala, Kathawala Abstract, Hoefle,
Roth, Anderson, Wareing, Hansch, Suh,
Berge, Gould, Engstrom Abstract,
11

Tobert,
12
Lee,
13
and Picard
14

§103 1 and 2
Picard § 102 1 and 2

Petitioner relies also on the Declaration of Roger Frank Newton,
Ph.D. (Ex. 1008) and the Declaration of Dr. David Gortler (Ex. 1015) in
support of the proposed grounds of unpatentability.

7
Corwin Hansch et al., “Aromatic” Substituent Constants for Structure-
Activity Correlations, 16 J. MED. CHEM. 1207–1216 (1973) (hereinafter
“Hansch”). Ex. 1024.
8
John T. Suh et al., Angiotensin-Converting Enzyme Inhibitors New Orally
Active Antihypertensive (Mercaptoalkanoyl)- and
[(Acylthio)alkanoyl]glycine Derivatives, 28 J. MED. CHEM. 57–60 (1985)
(hereinafter “Suh”). Ex. 1029.
9
Stephen M. Berge et al., Pharmaceutical Salts, 66 J. PHARM. SCI. 1–19
(1977) (hereinafter “Berge”). Ex. 1027.
10
Philip L. Gould, Salt Selection for Basic Drugs, 33 INT. J. PHARM. 201–
217 (1986). Ex. 1028.
11
R. G. Engstrom et al., Hypolipoproteinemic Effects of a Potent HMG-CoA
Reductase Inhibitor, IX International Symposium on Drugs Affecting Lipid
Metabolism, Florence (Italy), Oct. 22-25, 1986 (hereinafter “Engstrom”).
Ex. 1011.
12
Jonathan A. Tobert, New Developments in Lipid-Lowering Therapy: The
Role of Inhibitors of Hydroxymethylglutaryl-Coenzyme A Reductase, 76
CIRCULATION 534–538 (1987). Ex. 1012.
13
Ta-Jyh Lee, Synthesis, SARs and Therapeutic Potential of HMG-CoA
Reductase Inhibitors, 8 TRENDS PHARMACOL. SCI. 442–446 (1987).
Ex. 1013.
14
U.S. Patent No. 4,761,419, issued Aug. 2, 1988. Ex. 1021.
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II. ANALYSIS
A. Claim Interpretation
We interpret claims using the “broadest reasonable construction in
light of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, 793 F.3d
1268, 1278–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest
reasonable interpretation standard in enacting the AIA,”
15
and “the standard
was properly adopted by PTO regulation.”). Under the broadest reasonable
construction standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art at the
time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). “Absent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification . . . when [it]
expressly disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). “Although an inventor is indeed free to define the
specific terms used to describe his or her invention, this must be done with
reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
We determine that explicit construction of any specific claim term is
not necessary to determine whether to institute a trial in this case. See, e.g.,
Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
(“[C]laim terms need only be construed ‘to the extent necessary to resolve

15
The Leahy-Smith America Invents Act, Pub. L. No. 11229, 125 Stat.
284 (2011) (“AIA”).
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the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)).
B. Petitioner’s Asserted Obviousness Grounds
We generally follow a two-part inquiry to determine whether a new
chemical compound would have been obvious over particular prior art
compounds. Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1291–93
(Fed. Cir. 2012). First, we determine “whether a chemist of ordinary skill
would have selected the asserted prior art compounds as lead compounds, or
starting points, for further development efforts.” Id. at 1291. Second, we
analyze whether there was a reason to modify a lead compound to make the
claimed compound with a reasonable expectation of success. Id. at 1292.
Establishing that a chemical compound would have been obvious over a
structurally similar compound requires “a showing that the prior art would
have suggested making the specific molecular modifications necessary to
achieve the claimed invention.” Takeda Chem. Indus., Ltd. v. Alphapharm
Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (internal quotations
omitted).
In the instant case, Petitioner contends that Kathawala discloses
fluvastatin, which would have been a lead compound as it was known to
possess “excellent in vitro activity and demonstrated relatively high activity
for in vivo cholesterol biosynthesis inhibition.” Pet. 7. Petitioner argues that
a “[person of ordinary skill in the art] would have considered the logical
structural avenues available to further optimize [fluvastatin]” in order to
achieve the compound encompassed by the claims of the ’336 patent,
referred to in the Petition as pitavastatin. Id. at 89. Such “optimization”
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would require, inter alia, adding a single carbon to the indole ring of the
fluvastatin core to arrive at the quinoline ring structure of pitavastatin,
relocating the isopropyl group on the nitrogen of the indole ring of the
fluvastatin core to a carbon on the 2 position of the quinoline ring, and
modifying the isopropyl group to a cyclopropyl group. Id. 810; 2843.
Petitioner contends that such modifications would have been routine to a
person of ordinary skill in the art. Id.
We are not convinced that the steps needed to go from fluvastatin
ultimately to pitavastatin constituted routine optimization. The process of
modifying fluvastatin to pitavastatin would have required a number of
chemical alterations, each having a number of possible combinations.
Rather, we find that the process of modifying fluvastatin to pitavastatin
would have required significant guesswork and variation of a number of
parameters to achieve the end result. Prelim. Resp. 2646. For example, if
we focus on the modification of the isopropyl group to a cyclopropyl group
alone, the prior art does not clearly direct a person of ordinary skill in the art
to a cyclopropyl group, let alone the placement of a cyclopropyl group at the
2 position of a quinoline ring. As provided in the Petition,
Kathawala [] compounds of Formula I include compounds in
which one of Ro and R is a substituted phenyl (such as 4-
fluorophenyl), and the other is primary or secondary C1-6alkyl not
containing an asymmetric carbon atom, C3-6 cycloalkyl, or
phenyl(CH2)m.
Pet. 37 (emphasis in original). Petitioner contends that the C3-6 cycloalkyl
group contains a small number of compounds including cyclopropyl. Id.
(citing Ex. 1008 ¶¶ 111112). Kathawala formula I, however, describes a
genus of compounds that are distinct from pitavastatin, and we find no
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teaching in Kathawala directing us specifically to the use of cyclopropyl.
Nonetheless, relying on Roth, for example, Petitioner contends that one of
ordinary skill in the art “would have been motivated to try modifications at
the 2 position with substituents similar to isopropyl” because Roth
“disclosed the substitution of a trifluoromethyl group for isopropyl at the 2
position.” Id. at 36 (citing Roth Table 1; Ex. 1008 ¶¶ 86–99). Petitioner
then contends that, as “there were a finite number of compounds that had
similar size and chemistry to isopropyl, cyclopropyl would have been
obvious to try.” Id. at 43.
Such information does not make a persuasive case that knowledge in
the prior art was specific enough to identify the specific compound of the
claims. See Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1089 (Fed.
Cir. 2008) (upholding the district court’s finding of non-obviousness where
there were a “wide range of possible outcomes” and a “relative
unlikelihood” that the desired results would be obtained); cf. Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1367 (Fed. Cir. 2007) (“[T]he prior art provided
not only the means of creating acid addition salts but also predicted the
results, which Pfizer merely had to verify through routine testing.”). Rather,
we conclude that the information set forth in the Petition offers an
impermissible “obvious to try” situation, where the prior art provides only
general guidance with regard to a line of experimentation to pursue. See
Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 997 (Fed.
Cir. 2009) (“[P]atents are not barred just because it was obvious ‘to explore
a new technology or general approach that seemed to be a promising field of
experimentation, where the prior art gave only general guidance as to the
particular form of the claimed invention or how to achieve it.’”) (quoting
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In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)).
In view of the above, we are not persuaded that there is a reasonable
likelihood that Petitioner would prevail at trial with respect to at least one
claim of the ’336 patent on either of their obviousness challenges.
C. Petitioner’s Asserted Anticipation Ground
Petitioner asserts that “the genus disclosed in [Picard] clearly includes
pitavastatin calcium.” Pet. 58 (citing Ex. 1021, 2:93:1, 9:6168; Ex. 1008
¶ 168). Patent Owner contends that Picard discloses a genus of thousands of
compounds based on a quinoline core. Prelim. Resp. 56, (citing Ex. 1021,
2:103:2, 17:6720:15).
We agree with Patent Owner. The Petition fails to explain adequately
why the genus of Picard meets the test for a genus-to-species anticipation.
See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)
(“It is well established that the disclosure of a genus in the prior art is not
necessarily a disclosure of every species that is a member of that genus.”).
For example, Petitioner has not established a “pattern of preferences” in
Picard that points to the pitavastatin calcium species of the claims. See
Sanofi-Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1377 (Fed. Cir. 2006)
(requiring the genus disclosure to disclose a “pattern of preferences” that
reads onto the species claim in order for anticipation to be found).
Accordingly, we are not persuaded that there is a reasonable likelihood that
Petitioner would prevail at trial with respect to at least one claim of the ’336
patent, based on anticipation of claims 1 and 2 by Picard.
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III. CONCLUSION
The Petition does not persuade us that there is a reasonable likelihood
that at least one of the challenged claims is unpatentable based on the
asserted grounds. We deny the petition for inter partes review and decline
to institute trial on any of the asserted grounds as to any of the challenged
claims.
IV. ORDER
In consideration of the foregoing, it is hereby ORDERED that the
petition is denied as to all challenged claims and no trial is instituted.

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PETITIONER:
Jitendra Malik
ALSTON & BIRD LLP
Jitty.Malik@alston.com

Deanne M. Mazzochi
RAKOCZY MOLINO MAZZOCHI SIWIK LLP
dmazzochi@rmmslegal.com

PATENT OWNER:
David G. Conlin
Kathleen B. Carr
MINTZ, LEVIN, COHN FERRIS, GLOVSKY & POPEO P.C.
DGConlin@mintz.com
KBCarr@mintz.com