Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.

492 F.3d 1350, 83 U.S.P.Q. 2d (BNA) 1169, 2007 U.S. App. LEXIS 15349, 2007 WL 1839698
CourtCourt of Appeals for the Federal Circuit
DecidedJune 28, 2007
Docket2006-1329
StatusPublished
Cited by114 cases

This text of 492 F.3d 1350 (Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.) 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
Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 83 U.S.P.Q. 2d (BNA) 1169, 2007 U.S. App. LEXIS 15349, 2007 WL 1839698 (Fed. Cir. 2007).

Opinions

Opinion for the court filed by Circuit Judge LOURIE. Concurring opinion filed by Circuit Judge DYK.

LOURIE, Circuit Judge.

Alphapharm Pty., Ltd. and Genpharm, Inc. (collectively “Alphapharm”) appeal from the decision of the United States District Court for the Southern District of New York, following a bench trial, that U.S. Patent 4,687,777 was not shown to be invalid under 35 U.S.C. § 103. Takeda Chem. Indus., Ltd. v. Mylan Labs., 417 F.Supp.2d 341 (S.D.N.Y.2006). Because we conclude that the district court did not err in determining that the claimed compounds would not have been obvious in light of the prior art, and hence that the patent has not been shown to be invalid, we affirm.

BACKGROUND

Diabetes is a disease that is characterized by the body’s inability to regulate blood sugar. It is generally caused by inadequate levels of. insulin—a hormone produced in the pancreas. Insulin allows blood sugar or glucose, which is derived from food, to enter into the body’s cells and be converted into energy. There are two types of diabetes, known as Type 1 and Type 2. In Type 1 diabetes, the pancreas fails to produce insulin, and individuals suffering from this type of diabetes must regularly receive insulin from an external source. In contrast, Type 2 diabetic individuals produce insulin. However, their bodies are unable to effectively use the insulin that is produced. This is also referred to as insulin resistance. As a result, glucose is unable to enter the cells, thereby depriving the body of its main source of energy. Type 2 diabetes is the most common form of diabetes—affecting over 90% of diabetic individuals.

In the 1990s, a class of drugs known as thiazolidinediones (“TZDs”) was introduced on the market as a treatment for Type 2 diabetes. Takeda Chemical Industries, Ltd., and Takeda Pharmaceuticals North America, Inc. (collectively “Take-da”) first invented certain TZDs in the 1970s. Takeda’s research revealed that TZDs acted as insulin sensitizers, ie., compounds that ameliorate insulin resistance. Although the function of TZDs was not completely understood, TZDs appeared to lower blood glucose levels by binding to a molecule in the nucleus of the cell known as PPARgamma, which activates insulin receptors and stimulates the production of glucose transporters. Takeda, 417 F.Supp.2d at 348-49. The transporters then travel to the cellular surface and enable glucose to enter the cell from the bloodstream. Id.

Takeda developed the drug ACTOS®, which is used to control blood sugar in patients who suffer from Type 2 diabetes. ACTOS® has enjoyed substantial commercial success since its launch in 1999. By [1353]*13532003, it held 47% of the TZD market, and gross sales for that year exceeded $1.7 billion. Id. at 386. The active ingredient in ACTOS® is the TZD compound piogli-tazone, a compound claimed in the patent in suit.

Takeda owns U.S. Patent 4,687,777 (the “'777 patent”) entitled “Thiazolidinedione Derivatives, Useful As Antidiabetic Agents.” The patent is directed to “compounds which can be practically used as antidiabetic agents having a broad safety margin between pharmacological effect and toxicity or unfavorable side reactions.” '777 patent col.1 ll.34-37. The asserted claims are claims 1, 2, and 5. Claim 1 claims a genus of compounds. Claim 5 claims pharmaceutical compositions containing that genus of compounds. Those claims read as follows:

1. A compound of the formula:
[[Image here]]
or a pharmacologically acceptable salt thereof.
5. An antidiabetic composition which consists essentially of a compound of the formula:
[[Image here]]
or a pharmacologically acceptable salt thereof, in association with a pharma-cologically acceptable carrier, excipi-ent or diluent.

Id., claims 1 & 5.

For purposes of this appeal, the critical portion of the compound structure is the left moiety of the molecule, namely, the ethyl-substituted pyridyl ring.1 That chemical structure, which has an ethyl sub-stituent (C2 H5) pictorially drawn to the center of the pyridyl ring, indicates that the structure covers four possible compounds, viz., compounds with an ethyl sub-stituent located at the four available positions on the pyridyl ring. Takeda, 417 F.Supp.2d at 360. The formula includes the 3-ethyl compound, 4-ethyl compound, 5-ethyl compound (pioglitazone), and 6-ethyl compound.

[1354]*1354Claim 2 of the '777 patent covers the single compound pioglitazone. That claim, which depends from claim 1, reads:

2. A compound as claimed in claim 1, wherein the compound is 5-{4-[2-(5-ethyl-2-pyridyl)ethoxy] benzyl}-2,4-thiazolidinedione.

'777 patent, claim 2. Pioglitazone is referred to as the 5-ethyl compound because the ethyl substituent is attached to the 5-position on the pyridyl ring. That portion of the compound is depicted as:

[[Image here]]

Alphapharm, a generic drug manufacturer, filed an Abbreviated New Drug Application (“ANDA”) pursuant to the Hatch-Waxman Act seeking U.S. Food and Drug Administration (“FDA”) approval under 21 U.S.C. § 355(j) et seq. to manufacture and sell a generic version of piog-litazone. Alphapharm filed a Paragraph IV certification with its ANDA pursuant to § 505(j)(2)(B)(ii), asserting that the '777 patent is invalid as obvious under 35 U.S.C. § 103. In response, Takeda sued Alphapharm, along with three other generic drug manufacturers who also sought FDA approval to market generic pioglita-zone, alleging that the defendants have infringed or will infringe the '777 patent.

On January 17, 2006, the district court commenced a bench trial solely on the issues of validity and enforceability of the '777 patent. Alphapharm advanced its invalidity argument, asserting ■ that the claimed compounds would have been obvious at the time of the alleged invention. Alphapharm’s obviousness contention rested entirely on a prior art TZD compound that is referenced in Table 1 of the '777 patent as compound b. The left moiety of compound b consists of a pyridyl ring with a methyl (CH3) group attached to the 6-position of the ring. That portion of its chemical structure is illustrated as follows:

CH2CH2—

Alphapharm asserted that the claimed compounds would have been obvious over compound b.

The district court found that Alphap-harm failed to prove by clear and convincing evidence that the asserted claims were invalid as obvious under 35 U.S.C. § 103. The court first concluded that there was no motivation in the prior art to select compound b as the lead compound for antidiabetic research, and that the prior art taught away from its use. As such, the court concluded that Alphapharm failed to make a prima facie case of obviousness.

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492 F.3d 1350, 83 U.S.P.Q. 2d (BNA) 1169, 2007 U.S. App. LEXIS 15349, 2007 WL 1839698, Counsel Stack Legal Research, https://law.counselstack.com/opinion/takeda-chemical-industries-ltd-v-alphapharm-pty-ltd-cafc-2007.