Forest Laboratories, LLC v. Sigmapharm Laboratories, LLC

918 F.3d 928
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 14, 2019
Docket2017-2369; 2017-2370; 2017-2372; 2017-2373; 2017-2374; 2017-2375; 2017-2376; 2017-2389; 2017-2412; 2017-2436; 2017-2438; 2017-2440; 2017-2441
StatusPublished
Cited by31 cases

This text of 918 F.3d 928 (Forest Laboratories, LLC v. Sigmapharm Laboratories, LLC) 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.

Bluebook
Forest Laboratories, LLC v. Sigmapharm Laboratories, LLC, 918 F.3d 928 (Fed. Cir. 2019).

Opinion

Moore, Circuit Judge.

Sigmapharm Laboratories, LLC, ("Sigmapharm"), Hikma Pharmaceuticals LLC, Hikma Pharmaceuticals PLC, Hikma Pharmaceuticals USA Inc., (collectively, "Hikma"), Breckenridge Pharmaceuticals Inc. ("Breckenridge"), Alembic Pharmaceuticals Ltd., Alembic Global Holdings S.A., Alembic Pharmaceuticals Inc., (collectively, *932 "Alembic"), Amneal Pharmaceuticals LLC, and Amneal Pharmaceuticals Co. India Pvt. Ltd. (collectively "Amneal") are drug manufacturers who filed Abbreviated New Drug Applications with the Food and Drug Administration seeking to market generic versions of Saphris, a drug product sold by Forest Laboratories, LLC. Saphris is a sublingually administered, atypical antipsychotic containing asenapine maleate.

Forest sued for patent infringement, asserting that Appellants' proposed generic products would infringe claims 1-2, 4-6, and 9-10 of U.S. Patent No. 5,763,476 . The parties have stipulated that the validity of claims 2, 5, and 6 rises and falls with that of claim 1, and the validity of claims 9 and 10 rises and falls with that of claim 4. Forest, Breckenridge, and Alembic have further stipulated that infringement of claims 9 and 10 rises and falls with that of claim 4. Claims 1 and 4 recite:

1. A pharmaceutical composition comprising as a medicinally active compound: trans-5-chloro-2-methyl-2,3,3a, 12b-tetrahydro-1H-dibenz[2,3:6,7]oxepino[4,5-c]pyrrole or a pharmaceutically acceptable salt thereof; wherein the composition is a solid composition and disintegrates within 30 seconds in water at 37° C.
4. A method for treating tension, excitation, anxiety, and psychotic and schizophrenic disorders, comprising administering sublingually or buccally an effective amount of a pharmaceutical composition comprising trans-5-chloro-2-methyl-2,3,3a, 12b-tetrahydro-1H-dibenz[2,3:6,7]oxepino[4,5-c]pyrrole or a pharmaceutically acceptable salt thereof.

Trans-5-chloro-2-methyl-2,3,3a,12b-tetrahydro-1H-dibenz[2,3:6,7]oxepino[4,5-c]pyrrole is also known as asenapine. Forest sells an atypical antipsychotic containing asenapine maleate under the name Saphris, which was developed by non-party Organon, another pharmaceutical company. Asenapine was originally developed as a conventional oral tablet. Conventional oral tablets are swallowed and enter into the digestive system before being metabolized. In contrast, Saphris is administered sublingually, meaning the formulation is placed under the tongue, where it dissolves. Buccal administration is similar, but in the cheek cavity.

Following a bench trial, the district court held Appellants had not established claims 1-2, 4-6, and 9-10 to be invalid and held Forest had not established infringement of claims 4, 9, and 10 as to Alembic and Breckenridge. Appellants appeal the district court's construction of claim 1 and its determination that the claims have not been established to be invalid. Forest cross-appeals, arguing the district court's finding that Breckenridge and Alembic do not infringe claim 4 was clearly erroneous. We have jurisdiction under 28 U.S.C. § 1295 (a)(1). We vacate and remand the district court's validity determination, and we vacate and remand for it to reconsider infringement under a corrected claim construction.

DISCUSSION

I. Construction of Claim 1

While claim 4 is expressly limited to sublingual or buccal formulations of asenapine, claim 1 is not and instead states that "the composition is a solid composition and disintegrates within 30 seconds in water at 37° C." The district court nevertheless construed claim 1 to be limited to buccal and sublingual formulations. Appellants argue the district court erred in construing claim 1 this way. We review a district court's ultimate claim construction and its interpretations of intrinsic evidence de novo and any subsidiary fact findings *933 about extrinsic evidence for clear error. CardSoft, (Assignment for the Benefit of Creditors), LLC v. VeriFone, Inc. , 807 F.3d 1346 , 1348 (Fed. Cir. 2015).

We see no error in the district court's construction. Although claim 1 does not expressly refer to buccal or sublingual administration, the claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp. , 415 F.3d 1303 , 1315 (Fed. Cir. 2005) (en banc) (quoting Markman v. Westview Instruments, Inc. , 52 F.3d 967 , 979 (Fed. Cir. 1995) ). "When a patent ... describes the features of the 'present invention' as a whole, this description limits the scope of the invention." Verizon Servs. Corp. v. Vonage Holdings Corp. , 503 F.3d 1295 , 1308 (Fed. Cir. 2007). Here, the '476 patent states "[t]he invention relates to a sublingual or buccal pharmaceutical composition," '476 patent at 1:6-7, strongly supporting the district court's construction. See also id. at 1:33-36. That construction is further supported by additional language in the specification, which explains the benefits of sublingual and buccal treatment over the prior art. Id. at 1:33-34 ("The invention therefore relates to a sublingual or buccal pharmaceutical composition ...."). The patent is also expressly titled "Sublingual or Buccal Pharmaceutical Composition." See, e.g. , UltimatePointer, L.L.C. v. Nintendo Co. , 816 F.3d 816 , 823 (Fed. Cir. 2016) (using patent title to inform claim construction). Additionally, the claim language "disintegrates within 30 seconds in water at 37° C" appears in the '476 patent as the definition of "[r]apid disintegration." '476 patent at 1:59-61. The specification states that "[p]referred pharmaceutical compositions are solid pharmaceutical compositions which rapidly disintegrate in the mouth of a subject, upon insertion into the buccal pouch or upon placement under the tongue." Id.

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Bluebook (online)
918 F.3d 928, Counsel Stack Legal Research, https://law.counselstack.com/opinion/forest-laboratories-llc-v-sigmapharm-laboratories-llc-cafc-2019.