Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 1 of 13
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`Kowa Company, Ltd. et al.,
`
`
`Plaintiffs,
`
`v.
`
`Aurobindo Pharma Limited et al.,
`
`
`Defendants.
`
`Kowa Company, Ltd. et al.,
`
`
`Plaintiffs,
`
`v.
`
`Amneal Pharmaceuticals LLC,
`
`
`Defendant.
`
`Kowa Company, Ltd. et al.,
`
`
`Plaintiffs,
`
`v.
`
`Mylan Inc. et al.,
`
`
`Defendants.
`
`
`Kowa Company, Ltd. et al.,
`
`
`Plaintiffs,
`
`v.
`
`Orient Pharma Co., Ltd.,
`
`
`Defendant.
`
`
`
`
`
`
`
`
`Civil Action No. 14-CV-2497 (PAC)
`
`Civil Action No. 14-CV-2758 (PAC)
`
`Civil Action No. 14-CV-2647 (PAC)
`
`Civil Action No. 14-CV-2759 (PAC)
`
`
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 2 of 13
`
`
`
`Kowa Company, Ltd. et al.,
`
`
`Plaintiffs,
`
`v.
`
`Zydus Pharmaceuticals (USA) Inc. et al.,
`
`
`Defendants.
`
`Kowa Company, Ltd. et al.,
`
`
`Plaintiffs,
`
`Civil Action No. 14-CV-2760 (PAC)
`
`Civil Action No. 14-CV-5575 (PAC)
`
`
`
`
`
`
`
`
`
`Sawai USA, Inc. et al.,
`
`
`v.
`
`Defendants.
`
`SUPPLEMENTAL DECLARATION OF DAVID H. SHERMAN, Ph.D. IN SUPPORT
`OF DEFENDANTS’ JOINT RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
` 2
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 3 of 13
`
`
`
`I.
`
`INTRODUCTION.
`
`1.
`
`I, Dr. David H. Sherman, submit this Supplemental Declaration on behalf of
`
`Defendants Amneal Pharmaceuticals LLC, Aurobindo Pharma Limited, Aurobindo Pharma USA
`
`Inc., Mylan Pharmaceuticals Inc., Mylan Inc., Orient Pharma Co., Ltd., Sawai USA, Inc., Sawai
`
`Pharmaceutical Co., Ltd., Zydus Pharmaceuticals (USA) Inc. and Cadila Healthcare Ltd. (dba
`
`Zydus Cadila) (collectively, “Defendants”) in the above-captioned actions.
`
`2.
`
`I am the same Dr. David H. Sherman who submitted a Declaration, dated May 8,
`
`2015, on behalf of Defendants in support of Defendants’ Joint Opening Claim Construction Brief
`
`in this matter (ECF No. 79-7 (Civil Action No. 14-cv-2647-PAC)) (“Sherman Decl.”).
`
`3.
`
`I discuss herein my opinions concerning the meaning of the disputed term of
`
`claim 1 of U.S. Patent No. 5,856,336 (“the ‘336 patent”)1 in response to arguments made by
`
`Plaintiffs in their Opening Claim Construction Brief, dated May 8, 2015 (ECF No. 80 (Civil
`
`Action No. 14-cv-2647-PAC)) (“Plaintiffs’ Br.”). I further discuss herein my opinions
`
`concerning how the person of ordinary skill in the art2, in the relevant timeframe, would have
`
`understood that disputed term and the bases and reasons supporting my opinions, which
`
`supplement those opinions I provided in my prior Declaration.
`
`4.
`
`In my opinion, the arguments on which Plaintiffs rely to support their proposed
`
`construction are based on a misunderstanding of stereochemistry and a misinterpretation of the
`
`specification of the ‘336 patent. For example, in their Opening Claim Construction Brief,
`
`Plaintiffs focus on the word “may” in the following disclosure in the ‘336 patent specification:
`
`
`1 The ‘336 patent is attached as Exhibit 1 to the Declaration of Thomas R. Burns in Support of
`Defendants’ Joint Opening Claim Construction Brief, dated May 8, 2015, previously submitted
`in this matter (ECF No. 79-1 (Civil Action No. 14-cv-2647-PAC)) (“Burns Decl.”).
`2 I set forth a definition of the person of ordinary skill in the art as relevant to the ‘336 patent in
`my prior Declaration. (Sherman Decl. ¶¶ 22-23).
`
` 3
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 4 of 13
`
`
`
`… may have at least two or four optical isomers. The compounds
`of the formula 1 include all of these optical isomers and all of the
`mixtures thereof.
`
`
`(Plaintiffs’ Br. at 14 (quoting the ‘336 patent at col. 2, l. 66 – col. 3, l. 2 (emphasis added)).
`
`Based on this disclosure, Plaintiffs appear to argue that structures purportedly covered by claim 1
`
`of the ‘336 patent may or may not include optical isomers. (See id. at 14-15). However, a
`
`person of ordinary skill in the art would not agree with this proposition, for at least the reasons
`
`discussed below.
`
`5.
`
`Plaintiffs further argue that Defendants’ proposed construction “redefines” the
`
`term “compound” and “transforms” the claim from one that permits optical isomers to a genus
`
`including each optical isomer. (Plaintiffs’ Br. at 13-16). I disagree that a person of ordinary skill
`
`in the art would understand that Defendants’ construction operates in this manner. Rather,
`
`because the structure depicted in claim 1 has stereogenic centers, a person of ordinary skill in the
`
`art would have (and could have) only interpreted claim 1 of the ‘336 patent as a genus including
`
`all optical isomers of the depicted structure, and all mixtures thereof, as Defendants have
`
`construed the disputed term.
`
`II.
`
`OPINIONS.
`
`A.
`
`6.
`
`How the Person of Ordinary Skill in the Art Would Have Understood Claim
`1 of the ‘336 Patent in Light of the Specification of the ‘336 patent.
`
`I have been asked to respond to arguments made in Plaintiffs’ Opening Claim
`
`Construction Brief concerning the proposed construction of the following term of claim 1 of the
`
`‘336 patent:
`
` 4
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 5 of 13
`
`
`
`A compound of the formula,
`
`
`Z=―CH(OH)―CH2―CH(OH)―CH2―COO.1/2Ca.
`
`
`To arrive at my opinions, I have reviewed, among other things, the ‘336 patent and other
`
`materials listed herein and in my prior Declaration. I have also relied on my education, training
`
`and experience.
`
`7.
`
`Upon reviewing
`
`the arguments presented
`
`in Plaintiffs’ Opening Claim
`
`Construction Brief, it remains my opinion that the person of ordinary skill in the art would have
`
`understood the term in dispute, as disclosed in claim 1 of the ‘336 patent, to mean:
`
`A genus including each optical isomer of the formula
`
`
`Z=―CH(OH)―CH2―CH(OH)―CH2―COO.1/2Ca. and all mixtures thereof.
`
`8.
`
`As noted above, the Plaintiffs argue that the term “may” in the following excerpt
`
`from the ‘336 patent specification indicates that the claimed compound may include some optical
`
`isomers, but may not:
`
`… may have at least two or four optical isomers. The compounds
`of the formula 1 include all of these optical isomers and all of the
`mixtures thereof.
`
` 5
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 6 of 13
`
`
`
`(Burns Decl. Ex. 1, the ‘336 patent at col. 2, l. 66 – col. 3, l. 2 (emphasis added)
`
`(MYLAN(Pitav)009115-16)). I disagree with Plaintiffs’ characterization of this statement in the
`
`specification.
`
`9.
`
`First, the sentence following that statement in the specification makes clear that
`
`the compounds “include all of these optical isomers and all of the mixtures thereof.” (Burns
`
`Decl. Ex. 1, the ‘336 patent at col. 3, ll. 1-2 (emphasis added) (MYLAN(Pitav)009116)). A
`
`person of ordinary skill in the art would interpret this statement to indicate that the invention was
`
`intended to cover all possible optical isomers and all mixtures thereof.
`
`10.
`
`Second, the person of ordinary skill in the art would have understood that the
`
`“may” language to which Plaintiffs point demonstrates, at best, that not all of the compounds
`
`disclosed in the ‘336 patent specification will have optical isomers. This is because not all of the
`
`disclosed compounds will contain stereogenic centers, which are necessary for a compound to
`
`have optical isomers.
`
`11.
`
`For example, the ‘336 patent specification discloses a large genus of the “novel
`
`mevalonolactone derivatives of the present invention.” (Burns Decl. Ex. 1, the ‘336 patent at
`
`col. 1, l. 38 – col. 2, l. 65 (MYLAN(Pitav)009115)). This genus is represented by the below
`
`formula, which is further described in the ‘336 patent:
`
`
`
` 6
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 7 of 13
`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 7 of 13
`
`(Id). Each of the letters “R1,” “R2,” “R3,” “R4,” “R5,” “R6,” “Y” and “Z” that appears in the
`
`chemical structure drawing above represents a position where a number of different chemical
`
`groups can be added. For instance, the specification of the ‘336 patent explains that the “Y”
`
`position can be substituted with the following chemical groups “—CH2—, —CH2CH2—, —CH=CH—,
`
`—CH2—CH=CH— or —CH=CH-CH2—.” (Id. at col. 1, 11. 40-52, 65-67 GVIYLANG’itav)009115)).
`
`The total number of chemical compounds described by the genus in columns 1 and 2 of the ‘336
`
`patent is calculated by multiplying the different options at each group together. Based on this
`
`calculation, the genus disclosed at columns 1 and 2 of the ‘336 patent contains tens of thousands
`
`of compounds.
`
`(10'. at col. 1, l. 38 — col. 2, l. 65 (MYLAN(Pitav)009115)).
`
`12.
`
`Among the many compounds disclosed in the genus described at columns 1 and 2
`
`of the ‘336 patent, there are a variety of different stereogenic centers. A person of ordinary skill
`
`in the alt would have recognized, based on his or her knowledge of organic chemistry, that some
`
`of the compounds included in the genus do not have any stereogenic centers. For example, a
`
`structure disclosed within the genus of columns 1 and 2 of the ‘336 patent where R], R2, R3 and
`
`R6 are hydrogen atoms, R4 is a fluorine atom, R5 is an isopropyl group, Y is a —CH=CH— group
`
`and Z constitutes the remainder of the side chain, is depicted below:
`
`coo.1/2Ca
`
`
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 8 of 13
`
`
`
`(Burns Decl. Ex. 1, the ‘336 patent at col. 1, l. 38 – col. 2, l. 65 (MYLAN(Pitav)009115)). One
`
`of ordinary skill in the art would have understood that this compound does not have any carbon
`
`atoms within the molecule that are bonded to four different types of atoms or groups of atoms.
`
`Therefore, this compound does not have any asymmetric carbon atoms, which are also known as
`
`stereogenic centers. As the compound does not have any stereogenic centers, a person of
`
`ordinary skill in the art would have understood that there are no optical isomers for this
`
`compound. Thus, the person of ordinary skill would have understood that some of the
`
`compounds disclosed in the genus at columns 1 and 2 have asymmetric carbon atoms and optical
`
`isomers, and others do not. (See Sherman Decl. ¶¶ 27-35; Burns Decl. Ex. 4, ERNEST L. ELIEL,
`
`STEREOCHEMISTRY OF CARBON COMPOUNDS 1-4, 9-12, 16-21 (1962) (“Eliel”) (MYLAN(Pitav)
`
`017297-82, 017288-90, 017294-99)).
`
`13.
`
`Looking further at the ‘336 patent specification, immediately after describing the
`
`genus in columns 1 and 2, the inventors state:
`
`[t]hese compoundsmay [sic] have at least one or two asymmetric
`carbon atoms and may have at least two to four optical isomers.
`The compounds of the formula I include all of these optical
`isomers and all of the mixtures thereof.
`
`(Burns Decl. Ex. 1, the ‘336 patent at col. 2, l. 66 – col. 3, l. 2 (MYLAN(Pitav)009115-16)).
`
`Based on his or her experience, one of ordinary skill in the art would have understood that the
`
`word “may” is used because some compounds in the genus at columns 1 and 2 of the ‘336 patent
`
`have asymmetric carbon atoms and optical isomers and others do not.
`
`14.
`
`In contrast to the many different compounds disclosed in the ‘336 specification at
`
`columns 1 and 2, a person of ordinary skill in the art would have understood that the genus
`
`disclosed in claim 1 of the ‘336 patent only includes a compound that has two asymmetric
`
`carbon atoms, or stereogenic centers, and four optical isomers. One of ordinary skill in the art
`
` 8
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 9 of 13
`
`
`
`would have understood that all members of the genus of claim 1 must be optical isomers or
`
`mixtures thereof, because the only structure depicted in the claim has asymmetric carbon atoms.
`
`(See Sherman Decl. ¶¶ 27-35). One of ordinary skill in the art would, therefore, have understood
`
`that the only chemicals disclosed by claim 1 are optical isomers or mixtures thereof.
`
`15.
`
`As discussed in my prior Declaration, one of ordinary skill in the art would have
`
`understood that the “flat” structure disclosed in claim 1 of the ‘336 patent necessarily includes a
`
`genus of all optical isomers and all mixtures thereof, consistent with Defendants’ proposed
`
`construction. (Sherman Decl. ¶¶ 31-35).
`
`16.
`
`This position is confirmed, not contradicted, by the specification’s statement that:
`
`“The compounds of the formula I include all of these optical isomers and all of the mixtures
`
`thereof.” (Burns Decl. Ex. 1, the ‘336 patent at col. 3, ll. 1-2 (MYLAN(Pitav)009116)). One of
`
`ordinary skill would have understood from this disclosure, also cited by Plaintiffs (Plaintiffs’ Br.
`
`at 14), that the inventors intended to include all optical isomers and all of the mixtures thereof,
`
`whenever optical isomers are present. As discussed above, with respect to claim 1, a person of
`
`ordinary skill in the art would have understood that the genus of the claim must exist as one of
`
`four optical isomers, or mixtures thereof. As such, one of ordinary skill would have understood
`
`that claim 1 includes all of these optical isomers and all mixtures thereof.
`
`B.
`
`Plaintiffs’ Arguments Are Not Consistent with How a Person of Ordinary
`Skill in the Art Would Have Understood the Disputed Claim Term.
`
`17.
`
`In their Opening Claim Construction Brief, Plaintiffs argue that their proposed
`
`construction “is consistent with the specification. In the specification, the inventors expressly
`
`recognized that mevalonolactone derivatives – of which pitavastatin calcium is one – may have
`
`optical isomers.” (Plaintiffs’ Br. at 14).
`
` 9
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 10 of 13
`
`
`
`18.
`
`As discussed above, the specification discloses that the compounds represented in
`
`columns 1 and 2 “may” or “may not” have stereogenic centers and optical isomers. Regardless
`
`of the use of “may” in the specification and contrary to Plaintiffs’ suggestion, there is no such
`
`ambiguity concerning whether the structure disclosed in claim 1 of the ‘336 patent possesses
`
`stereogenic centers and thus multiple different optical isomers. Indeed, one of ordinary skill in
`
`the art would have understood, as a matter of convention, that the structure of claim 1 has two
`
`stereogenic centers and thus four different optical isomers. (Sherman Decl. ¶¶ 31-35). The only
`
`chemicals disclosed by claim 1 are optical isomers or mixtures thereof. Because the compound
`
`recited in claim 1 is depicted as a “flat” structure and recites no specific stereochemistry, and in
`
`light of the specification’s statement that the compounds include “all of these optical isomers and
`
`all of the mixtures thereof,” a person of ordinary skill in the art would have understood that the
`
`structure of claim 1 includes a genus of all of the compound’s optical isomers and all mixtures
`
`thereof.
`
`19.
`
`Plaintiffs argue that “Defendants’ proposed construction requires the Court to
`
`depart from the plain and ordinary meaning of ‘compound,’ redefining the term to mean ‘a genus
`
`including each optical isomer…and all mixtures thereof.’” (Plaintiffs’ Br. at 15; see also id. at 2
`
`(“Defendants’ proposed construction improperly changes ‘compound’ to ‘genus’ . . . .”)).
`
`20.
`
`I disagree with these arguments. As discussed in my prior Declaration, and
`
`above, one of ordinary skill in the art would have understood, as a matter of convention, that the
`
`“compound’ recited in claim 1 necessarily includes a genus including each optical isomer and all
`
`mixtures thereof. (Sherman Decl. ¶¶ 31-35). The use of the word “compound” in claim 1 would
`
`not have changed the understanding of a person of ordinary skill in the art regarding the
`
` 10
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 11 of 13
`
`
`
`stereochemistry of the structure depicted in claim 1. There is no other way that a person of
`
`ordinary skill in the art would have interpreted the below term of claim 1 of the ‘336 patent:
`
`A compound of the formula,
`
`
`
`
`Z=―CH(OH)―CH2―CH(OH)―CH2―COO.1/2Ca.,
`
`other than as “a genus including each optical isomer . . . and all mixtures thereof,” consistent
`
`with Defendants’ construction. The claim, as disclosed, does not merely “permit” optical
`
`isomers, as Plaintiffs suggest, it encompasses only optical isomers of the claimed structure or
`
`mixtures thereof.
`
`21.
`
`If the inventors had wanted to restrict claim 1 to particular isomers, they could
`
`have easily done so by using well-known stereochemistry designations such as dashed or filled in
`
`wedges, or using the “R” and “S” letter notations adjacent to the two stereogenic carbon atoms.
`
`(Sherman Decl. ¶¶ 32-34). Indeed, without stereochemistry designations, it would not be
`
`possible to determine that the inventors intended to refer to any particular isomer or mixture.
`
`The deliberate depiction of a “flat” structure without stereochemistry designations, combined
`
`with the clear statement in the specification that all isomers are included, unambiguously
`
`demonstrates that all optical isomers, and mixtures thereof, must be included in the claim. (Id.).
`
` 11
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 12 of 13
`
`
`
`C.
`
`22.
`
`Conclusion.
`
`For at least the reasons discussed above, in addition to the reasons set forth in my
`
`prior Declaration, submitted on May 8, 2015, the person of ordinary skill in the art relevant to the
`
`‘336 patent would have understood the disputed term of claim 1 of the ‘336 patent to mean:
`
`A genus including each optical isomer of the formula
`
`
`Z=―CH(OH)―CH2―CH(OH)―CH2―COO.1/2Ca. and all mixtures thereof.3
`
`III. ADDITIONAL INFORMATION.
`
`23.
`
`This Supplemental Declaration sets forth additional opinions I have formed based
`
`on information available as of the date below. Because other as yet unknown and unidentified
`
`material may be introduced during this litigation, which may fall within my area of expertise, I
`
`may have relevant and important opinions regarding such as yet unknown and unidentified
`
`material. I reserve the right to offer opinions on any such material. I further reserve the right
`
`and intend to testify and offer additional opinions in response to any opinions offered by
`
`Plaintiffs or any of their proposed experts.
`
`24.
`
`I specifically reserve the right to further supplement my opinions based on any
`
`claim construction materials or other related arguments or opinions submitted on behalf of
`
`Plaintiffs
`
`or
`
`in
`
`order
`
`to
`
`clarify
`
`the
`
`information
`
`provided
`
`herein.
`
`
`3 As discussed in my prior Declaration, a person of ordinary skill in the art would have
`understood that the genus includes the optical isomers identified in Paragraph 32 therein, and all
`mixtures of those optical isomers. (Sherman Decl. ¶ 32).
`
` 12
`
`

`

`Case 1:14-cv-02758-PAC Document 68 Filed 06/10/15 Page 13 of 13
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`
`______________________________
` David H. Sherman
`
`
`
`
`
`
`
`
`
`
`
`
`
` June 10, 2015
`Date
`
`
`
`
`
`
`
`
` 13
`
`