Amgen Inc. v. Ariad Pharmaceuticals, Inc.

333 F. App'x 549
Court of Appeals for the Federal Circuit·Decided June 1, 2009·No. No. 2009-1023·Published

Opinion

MOORE, Circuit Judge.

The Plaintiffs/Counterclaim Defendants-Appellees (collectively, Amgen) sued the Defendants/Counterclaimants-Appellants (collectively, Ariad) in the United States District Court for the District of Delaware for a declaratory judgment of invalidity and noninfringement of U.S. Patent No. 6,410,516 (the '516 patent). Ariad counterclaimed for infringement of claims 6, 18, 70-72, 188, and 184 of the '516 patent (the asserted claims). The district court construed a number of terms in the asserted claims, largely in accordance with Amgen’s proposed constructions. In light of its claim construction, the district court granted Amgen’s motion for summary judgment of noninfringement. Amgen, Inc. v. Ariad Pharma., Inc., 577 F.Supp.2d 695 (D.Del.[551]*5512008). Ariad appeals. For the reasons set forth below, we affirm.

BACKGROUND.

We previously discussed the technology at issue in this case with regard to different claims of the '516 patent. See Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366, 1369-70 (Fed.Cir.2009). The '516 patent concerns a protein known as NF-kB, and claims methods comprising “reducing NF-kB activity.” All of the asserted claims include that limitation:

6. A method for diminishing induced NF-icB-mediated intracellular signaling comprising reducing NF-kB activity in cells such that NF-KB-mediated intracellular signaling is diminished.
70. The method of claim 6, carried out on mammalian cells.
71. The method of claim 6, carried out on human cells.
72. The method of claim 70 or 71, carried out on immune cells.
18. A method for reducing Interleukin-1 or Tumor Necrosis Faetor-a activity in mammalian cells comprising reducing NF-kB activity in the cells so as to reduce intracellular signaling caused by Interleukin-1 or Tumor Necrosis Factor-a in the cells.
183. The method of claim 18, carried out on human cells.
184. The method of claim 18 or 183, carried out on immune cells.

The district court determined that “NF-kB activity” means “the ability of NF-kB to act as an intracellular messenger by being released from IkB; translocating into the nucleus; and regulating the transcription of particular genes by binding to specific DNA recognition sequences in those genes.” Amgen, 577 F.Supp.2d at 727. The parties do not appeal this construction. NF-kB activity may arise when it is induced by extracellular influences such as tumor necrosis factor-alpha (TNF-a) — an “inducing substance” in the language of the specification. TNF-a interacts with receptors on the surface of the cell and thereby initiates a chain of events that eventually releases NF-kB from la — the first step of NF-kB activity. The parties’ arguments on appeal focus on the meaning of “reducing NF-kB activity in cells.” The reduction of NF-kB activity is desirable because NF-kB increases the harmful expression of certain genes.

Because NF-kB also induces the expression of its own inhibitor, IkB, NF-kB activity will decrease naturally if the external inducing substance (e.g., TNF-a) is removed. Exogenous agents may also be able to decrease NF-kB activity, and it is helpful to consider several examples of such agents. The '516 patent proposes several classes of molecules potentially capable of reducing NF-kB activity, such as specific inhibitors, dominantly interfering molecules, and decoy molecules, all of which were discussed in greater detail in Ariad, 560 F.3d at 1374-76. These classes of molecules are meant to act inside the cell. For example, decoy molecules are “designed to mimic a region of the gene whose expression would normally be induced by NF-kB. In this case, NF-kB would bind the decoy, and thus, not be available to bind its natural target.” '516 patent col.37 11.51-54. In contrast, the accused drug — Amgen’s Enbrel — acts outside the cell. Enbrel acts by binding to free TNF-a outside the cell, thus interfering with the TNF-a’s ability to reach the receptors on the cell and induce NF-kB activity. Amgen, 577 F.Supp.2d at 700. The prior art also contains example agents that act outside the cell. For example, antibiotics act by killing bacteria, which consequentially reduces the amount of TNF-a released by macrophages in re[552] sponse to the bacterial infection. The use of decoy molecules, Enbrel, or antibiotics all may ultimately result in a decrease of NF-KB activity, but the question remains what is included in the properly interpreted scope of “reducing NF-kB activity in cells.”

The district court agreed with Amgen that the asserted claims are limited to actions that reduce NF-kB activity wherein those actions occur within the cell. As such, the district court adopted Amgen’s construction of “reducing NF-kB activity in cells”: “taking action inside cells to directly inhibit (interfere or block) an NF-kB activity.” Id. at 728. Under the district court’s construction, decoy molecules could infringe, but Enbrel cannot. This precipitated the district court’s summary judgment of noninfringement. Id. at 700-02. On October B, 2008, the district court stayed Amgen’s invalidity claims and entered final judgment on the noninfringement claim pursuant to Fed.R.Civ.P. 54(b). We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

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Amgen Inc. v. Ariad Pharmaceuticals, Inc., 333 F. App'x 549 (Fed. Cir. 2009).

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