Allergan, Inc. v. Apotex Inc.

754 F.3d 952, 2014 WL 2579287
CourtCourt of Appeals for the Federal Circuit
DecidedJune 10, 2014
Docket2013-1245, 2013-1246, 2013-1247, 2013-1249
StatusPublished
Cited by47 cases

This text of 754 F.3d 952 (Allergan, Inc. v. Apotex Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 2014 WL 2579287 (Fed. Cir. 2014).

Opinions

Opinion for the court filed by Chief Judge PROST. Opinion dissenting in part filed by Circuit Judge CHEN.

PROST, Chief Judge..

Apotex Inc., Apotex Corp., Sandoz, Inc., Hit-Tech Pharmacal Co., Inc., Actavis, Inc., Watson Laboratories, Inc., and Watson Pharma, Inc. (collectively “appellants”) appeal from a final judgment of the U.S. District Court for the Middle District of North Carolina finding that appellants had infringed claims of U.S. Patent Nos. 7,388,-029 (“'029 patent”) and 7,351,404 (“'404 patent”) and had failed to establish they were invalid. For the reasons stated below, we reverse the district court’s findings with respect to the validity of each patent.

Background

Plaintiff-appellee Allergan, Inc. (“Aller-gan”) has U.S. Food and Drug Administration (FDA) approval to sell Latisse®, a 0.03% bimatoprost ophthalmic solution, as a topical solution to treat hypotrichosis (i.e., hair loss or reduction) of the eyelashes by stimulating hair growth.

Bimatoprost is a synthetic prostaglandin F-2-alpha (“PGF”) analog. Prostaglan-dins are naturally occurring molecules that bind to receptors on the surface of cells. When prostaglandins bind to a cell’s receptors, they generate signals that change the way that the cell functions, for example, by controlling cell growth. Because of the ability of prostaglandins to control cell [956]*956properties, they are significant targets for pharmaceutical research in a variety of areas. PGF is a particular type of prosta-glandin that binds with the FP receptor.

The chemical structure of naturally occurring PGF is illustrated below:

[[Image here]]

The structure includes a “cyclopentane ring” of carbon atoms, which is illustrated above as the pentagonal structure at the left of the diagram. Two chains of atoms are attached to the ring. The top chain is called the “alpha chain,” and the chain below it is called the “omega chain.”

By the mid-1980s, it was established that naturally occurring PGF could alleviate intraocular pressure (IOP), which is associated with the eye disease glaucoma. To develop an effective treatment and minimize side effects, scientists worked on synthesizing and testing more selective derivatives and analogs of PGF. A particular kind of PGF analog, 17-phenyl PGF analogs, proved to be particularly useful in the treatment of glaucoma. Bimatoprost is one such synthetic 17-phenyl PGF analog, which emerged in the course of research by Allergan scientists. In 2001, Allergan received FDA approval to sell Lumigan®, a 0.03% bimatoprost ophthalmic solution-identical to Latisse®—as an eyedrop to treat glaucoma, which it continues to market.

Hair loss treatment was another area in which certain PGF analogs proved useful. In the 1990s, Dr. Murray Johnstone performed studies on latanoprost, another kind of 17-phenyl analog. Latanoprost optical solution also received FDA approval for use in glaucoma treatment, and it continues to be marketed as Xalatan®. Dr. Johnstone observed that in the course of treating glaucoma patients with latanop-rost eyedrops, a substantial fraction of them grew much longer and denser eyelash hair. Dr. Johnstone filed a patent application on the use of latanoprost and other 17-phenyl PGF analogs to promote hair growth in February 1997.

The work that led to the '029 patent, the first of the two patents asserted by appel-lees in this case, was conducted by researchers at Proctor & Gamble led by Dr. Mitchell DeLong. Dr. DeLong and his team studied the effects of a wide range of prostaglandin compounds in mice. In the course of their studies they observed that administration of PGF compounds that were selective for the FP receptor resulted in growth of longer and thicker hair. On March 21, 2000, Dr. DeLong and others filed a provisional patent application on the topical application of compounds that bind the FP receptors to treat hair loss. The '029 patent claims priority to this provisional application. During prosecution, in 2003, the parent application of the '029 patent was assigned to Duke University, and the patent issued on June 17, 2008.

The second patent asserted by appellees in this suit is the '404 patent, which is assigned to Allergan. The '404 patent arises from observations made during the clinical trials for Lumigan®. As had been observed for latanoprost, glaucoma patients treated with bimatoprost eyedrops spontaneously grew longer and thicker eyelash hair. See '404 patent col.ll 11.5-62. The '404 patent covers the treatment of eyelash hair loss through topical application of bimatoprost, and it claims priority to a provisional application filed on February 4, 2002.

[957]*957Allergan and Duke University (collectively “appellees”) sued each of the appellants under 35 U.S.C. § 271(e)(2)(A) after they submitted Abbreviated New Drug Applications (ANDAs) to the FDA seeking to market a generic version of Allergan’s Latisse® product. Appellees asserted claims 1, 8, 14, 18, and 20 of the '029 patent and claim 14 of the '404 patent. After a bench trial in the consolidated Hatch-Waxman action, the district court held, inter aha, that the asserted claims of the '029 and '404 patents are not invalid for anticipation, obviousness, insufficient written description, or lack of enablement, and, moreover, that appellants infringed. Allergan, Inc. v. Apotex, Inc., Nos. 1:10-CV-681, 1:11-CV-298, 1:11-CV-650, 2013 WL 286251, at *1 (M.D.N.C. Jan. 24, 2013). The district court subsequently enjoined appellants, along with any persons or entities who are in privity with appellants or to whom appellants transfer the ANDA, from commercial manufacture, use, offer to sell and/or sale of the proposed products until the latest of the expiration dates of the '029 and '404 patents. Allergan, Inc. v. Apotex, Inc., No. 1:10-CV-681 Permanent Inj. and Final J. 2-3, ECF No. 231.

This appeal followed, in which appellees raise issues of claim construction for the '029 patent, as well as the invalidity of the asserted claims of the '029 and '404 patents. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

I. Claim Construction

Claim construction is an issue of law that we review de novo. Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1276-77, (Fed.Cir.2014) (en banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed.Cir.1998) (en banc). In construing a claim term, we look at the term’s plain and ordinary meaning as understood by a person of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc). There is an exception to this general rule when a patentee sets out a definition and acts as her own lexicographer. Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012).

Appellants raise a single claim construction issue on appeal concerning the '029 patent.

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754 F.3d 952, 2014 WL 2579287, Counsel Stack Legal Research, https://law.counselstack.com/opinion/allergan-inc-v-apotex-inc-cafc-2014.