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Medicines Co. v. Mylan Inc.

United States District Court, N.D. Illinois, Eastern Division

June 28, 2017



          AMY J. ST. EVE, District Court Judge:

         Defendants Mylan Inc., Mylan Pharmaceuticals Inc., and Bioniche Pharma USA, LLC (collectively, "Defendants") have moved to amend the Court's Amended Final Judgment in light of the United States Court of Appeals for the Federal Circuit's recent opinion in this case. (R. 676.) Plaintiff The Medicines Company ("TMC") opposes Defendants' motion and also moves for a new trial. (R. 682; R. 684.) For the following reasons, the Court grants Defendants' motion and denies TMC's motion.


         I. The Patents-in-Suit

         The Court assumes the parties' familiarity with this case, but summarizes the relevant facts and procedural history. TMC is the owner of U.S. Patent Nos. 7, 582, 727 ("the '727 Patent") and 7, 598, 343 ("the '343 Patent"). Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 1298 (Fed. Cir. 2017). The patents-in-suit concern "pharmaceutical formulations-or 'batches'-of the drug bivalirudin." Id. Bivalirudin is a well-known drug covered by a different TMC patent that expired in 2015. Id. It is typically distributed as a dry powder that "must be compounded with a base, before being reconstituted in a clinical setting and administered to a patient as an intravenous injection." Id. Reconstituting bivalirudin involves dissolving the drug in powder form in an aqueous solvent. Id. Because dissolving bivalirudin without a base results in an acidic solution that is not suitable for injection into humans, commercial forms of bivalirudin compound the drug with a base to increase the pH of the reconstituted drug to render it acceptable for injection. Id. The claimed inventions of the patents-in-suit "are directed to minimizing impurities in batches of bivalirudin that have been compounded with a base." Id.

         The claimed inventions arose out of a problem TMC encountered when manufacturing Angiomax-a base-compounded bivalirudin drug product. The Food & Drug Administration ("FDA") "required TMC to limit the level of' Asp9-bivalirudin'-an impurity generated during the compounding process that shortens bivalirudin's shelf life-to less than 1.5 percent." Id. at 1299. Between 2001 and 2005, TMC produced Angiomax with Asp9 levels normally below 0.6%, but sometimes the process TMC used resulted in variable or high levels of Asp9. Id. After producing two batches in 2005 and 2006 with Asp9 levels above 1.5%, TMC investigated and identified the compounding process as the source of the problem. Id. One of the steps of compounding bivalirudin is mixing a bivalirudin solution (the powder bivalirudin dissolved into an aqueous solvent) with a pH-adjusting solution containing a base. Id. As the patents-in-suit indicate, this mixing process can result in "hotspots"-that is, certain "concentrated sites in the compounding solution that have much higher pH levels." Id. (quoting from the '727 Patent as an example). These hotspots in turn "catalyzed the degradation of bivalirudin to Asp9-bivalirudin, resulting in the undesirable high Asp9 levels that TMC was at times experiencing. Id.

         The inventions at issue in the patents-in-suit concern an "efficient mixing" process for combining the pH-adjusting solution with the bivalirudin solution that limits the formation of hotspots. Id. at 1299-1300 (noting that the "batch consistency of bivalirudin products compounded using 'efficient mixing' is the invention disclosed and claimed by the patents in suit, which were filed on the same day and share nearly identical specifications"). This process resulted in batches with Asp9 levels consistently below the FDA-mandated limit of 1.5%. Id. at 1299. Indeed, TMC found that efficient mixing resulted in batches with Asp9 levels that never exceeded 0.6%. Id. Both the '727 and the '343 Patents have a common claim limitation (the "batches limitation"): "[pharmaceutical batches of a drug product comprising bivalirudin . . . wherein the batches have a maximum impurity level of Asp9-bivalirudin that does not exceed about 0.6%" Id. at 1300 (quoting '727 Patent, col. 25:56-64; '343 Patent, col. 27:13-31). The patents-in-suit also defined the term "pharmaceutical batches" as follows:

As used here, "batch" or "pharmaceutical batch" refers to material produced by a single execution of a compounding process of various embodiments of the present invention. "Batches" or "pharmaceutical batches" as defined herein may include a single batch, wherein the single batch is representative of all commercial batches, and wherein the levels of, for example, Asp9-bivalirudin, total impurities, and largest unknown impurity, and the reconstitution time represent levels for all potential batches made by said process. "Batches" may also include all batches prepared by a same compounding process.

Id. (citation omitted) (quoting '727 Patent, col. 5:24-36; '343 Patent, col. 5:24-36).

         II. Defendants' ANDA and the Litigation Before Appeal

         Defendants submitted an ANDA to the FDA in 2010, seeking to market a generic version of Angiomax. Id. Defendants stated that they would limit the ASP9 level of its generic drug to less than 2% and certified either (1) that their product would not infringe the patents-in-suit, or (2) that the patents-in-suit were invalid. Id. TMC filed the current lawsuit asserting infringement of the '727 and '343 Patents under 35 U.S.C. § 271(e)(2), and Defendants filed counterclaims seeking declaratory judgments of invalidity. Id. The parties disputed the claim terms "pharmaceutical batches" and "efficiently mixing." Id. at 1300-01. With respect to the former, this Court's claim construction-to which both parties consented-"clarif[ies] that the definition requires a particular process." Id. at 1301. With respect to the latter disputed term, the Court looked to two examples set forth in the patents' specifications comparing TMC's "old compounding process, " which used "inefficient mixing conditions" (Example 4), with the new "efficient mixing" process (Example 5). Id. The Court ultimately concluded that TMC "had disclaimed the 'inefficient mixing conditions' of Example 4 and adopted Mylan's proposed construction of 'efficiently mixing' to require 'not using inefficient mixing conditions such as described in Example 4.'" Id. at 1301 (quoting (R. 119, Aug. 6, 2012 Op., 30)).

         Based on the claim construction of "efficiently mixing, " the Court granted summary judgment of non-infringement to Defendants with respect to the '343 Patent. (R. 309, Dec. 16, 2013 Op., 18); see also Meds. Co., 853 F.3d at 1301. Specifically, with respect to literal infringement, the Court explained that "[t]he only question is whether Mylan's compounding process is as inefficient (or more inefficient) than the compounding process described in Example 4, " and "[t]he undisputed facts show that Mylan's compounding process is more inefficient than the 'inefficient mixing' process described in Example 4." (R. 309 at 19-20); see also Meds Co., 853 F.3d at 1301. With respect to the doctrine of equivalents, the Court struck as untimely the declaration of TMC's expert supporting TMC's doctrine-of-equivalents argument. (R. 309 at 22-23.) The Court went on, however, to reason that even considering TMC's expert's belated opinions, TMC's infringement claim under the doctrine of equivalents would fail under the second prong of the "function/way/result test"-that is, the test requiring that the patentee show the accused device "performs the substantially same function in substantially the same way with substantially the same result"-because Defendants process "does not use 'efficient mixing.'" (Id. (quoting Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1352 (Fed. Cir. 2012)).) Furthermore, the Court concluded that "even if Mylan's compounding process did meet the function/way/result test, TMC cannot claim infringement under the doctrine of equivalents because the '343 patent specification and prosecution history expressly disclaim 'inefficient mixing' conditions such as Example 4 in order to get around anticipation by prior art." (R. 23-24 (quoting Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1307 (Fed. Cir. 2011), for the proposition that "when a specification excludes certain prior art alternatives from the literal scope of the claims and criticizes those prior art alternatives, the patentee cannot then use the doctrine of equivalents to capture those alternatives").) TMC therefore could not "claim that Mylan's compounding process, which is more inefficient than the 'inefficient mixing' process in Example 4, is substantially equivalent to the 'efficient mixing' process claimed by the '343 patent." (Id. at 24.)

         With regard to the '727 Patent, the Court "held that 'efficiently mixing' was not a claim limitation and determined that factual disputes concerning the Asp9 level of Mylan's ANDA product precluded summary judgment." Meds. Co., 853F.3datl301. The Court then conducted a bench trial with respect to infringement and validity of the '727 patent. The Court rejected Defendants' invalidity contentions and concluded that Defendants' ANDA infringed the '727 Patent as a matter of law. Id. With respect to infringement, the Court noted that "TMC did not advance arguments at trial regarding infringement under the doctrine of equivalents, [so] TMC's infringement allegations for the asserted claims are treated as allegations of literal infringement." (R. 590, Oct. 27, 2014 Op., 72 n.29.)[1]

         III. The Federal ...

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