Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DR. REDDY'S LABORATORIES, INC.
`Petitioner
`
`v.
`
`
`
`FRESENIUS KABI USA, LLC
`Patent Owner
`
`Case IPR2015-00715
`U.S. Patent No. 8,476,010 B2
`
`
`Mailed: February 27, 2015
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,476,010 AND
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
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`
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`3962855_1.docx
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`

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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`
`
`TABLE OF CONTENTS
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`
`
`Page
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED .................................. 4
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT .............................. 4
`
`II.
`
`THE CLAIMS UNDER CONSIDERATION ................................................. 5
`
`III. THE SPECIFICATION AND
`PROSECUTION HISTORY OF THE '010 PATENT .................................... 7
`
`A. The Specification Of The '010 Patent ....................................................... 7
`
`B. The Prosecution History Of The '010 Patent ..........................................10
`
`IV. CLAIM CONSTRUCTION ..........................................................................12
`
`A. "From About Zero To About 10%" ........................................................12
`
`B. "Siliconized" ...........................................................................................13
`
`C. "Inert To Propofol" .................................................................................15
`
`V.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART ..................................15
`
`VI. CLAIMS 1, 13-15, 17, 18, 20, AND 24-28 ARE OBVIOUS .......................16
`
`A. Ground 1 ____ Obvious In View Of The Diprivan®
`1997 PDR Entry, Farinotti And The Sudo '794 Patent ...........................16
`
`1.
`
`Independent Claim 1 ........................................................................17
`
`2. The Prior Art And Its Comparison To Claim 1 ...............................18
`
`a.
`
`Diprivan® Had All Of The Elements Of
`Claim 1, Except For A Siliconized Stopper ..........................18
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`b.
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`The Sudo '794 Patent Taught Siliconized
`Rubber Stoppers For Injection Medicaments ........................24
`
`3. There Was Ample Motivation To Substitute A
`Siliconized Bromobutyl Rubber Stopper For The
`Bromobutyl Rubber Stopper Of Commercial Diprivan® .................26
`
`4. A POSA Would Have Had A
`Reasonable Expectation Of Success ................................................28
`
`5. The Dependent Claims .....................................................................32
`
`B. Ground 2 ____ Obvious To Try In
`View Of The Diprivan® 1997 PDR
`Entry, Farinotti, And The Sudo '794 Patent ............................................35
`
`VII. SECONDARY CONSIDERATIONS, EVEN IF CONSIDERED,
`FAIL TO OVERCOME THE EVIDENCE OF OBVIOUSNESS ................37
`
`VIII. CONCLUSION ..............................................................................................38
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`TABLE OF AUTHORITIES
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`Page(s)
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`
`
`
`CASES
`
`Alcon Research, Ltd. v. Apotex Inc.,
`687 F.3d 1362 (Fed. Cir. 2012),
`cert denied, 133 S. Ct. 1736 (2013) .............................................................. 17, 26
`
`Daiichi Sankyo Co. v. Apotex Inc.,
`501 F.3d 1254 (Fed. Cir. 2007) .......................................................................... 15
`
`In re Cuozzo Speed Techs., LLC,
`No. 2014-1301, 2015 U.S. App. LEXIS 1699
`Slip. Op. (Fed. Cir. Feb. 4, 2015) ...................................................................... 12
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 16, 35
`
`Leapfrog Enters. Inc. v. Fisher-Price Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................................... 37
`
`Par Pharm. Inc. v. TWI Pharms., Inc.,
`773 F.3d 1186, No. 2014-1391,
`2014 U.S. App. LEXIS 22737 (Fed. Cir. Dec. 3, 2014) .............................. 17, 22
`
`Richardson-Vicks, Inc. v. Upjohn Co.,
`122 F.3d 1476 (Fed. Cir. 1997) .......................................................................... 37
`
`Zeneca, Inc. v. Shalala,
`213 F.3d 161 (4th Cir. 2000) .............................................................................. 18
`
`STATUTES, RULES & OTHER AUTHORITIES
`
`35 U.S.C. § 102(b) ............................................................................................passim
`
`35 U.S.C. § 103(a) ............................................................................................... 3, 16
`
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`EXHIBIT LIST
`
`1005
`
`1006
`
`1007
`1008
`1009
`
`
`Exhibit # Reference
`1001
`U.S. Patent No. 8,476,010
`1002
`Declaration of Thomas N. Feinberg, Ph.D
`1003
`Curriculum Vitae of Thomas N. Feinberg, Ph.D
`1004
`Smith et al., "Siliconization of Parenteral Drug Packaging
`Components," 1988, 42 J. of Parenteral Sci. and Tech. (1988
`Supp.)
`Entry for Diprivan® in the Physician's Desk Reference, 51st
`Edition, 1997, pp. 341, 2939-2945
`R. Farinotti, "Physio-chemical Interactions and Storage of
`Diprivan®," Ann. Fr. Anesth. Reanim., 1994 (French Publication)
`Certified English-LanguageTranslation of Exhibit 1006
`August 3, 2001 Web page for Diprivan® FAQs
`Han et al., "Physical properties and stability of two emulsion
`formulations of propofol," Int'l J.of Pharmaceutics, 215 (2001)
`207-220
`U.S. Patent No. 5,114,794
`West Technical Support Bulletin 1999/013, "Evaluating B2-
`Coating as an Alternative to Silicone Oil," January 26, 1999
`West Technical Report 2000/026, "B2-Coating Quantitative
`Particle Analysis," November 15, 2000
`"Siliconization: As Applied to Containers and Closures," Bulletin
`of the Parenteral Drug Association, Vol. 22, No. 2 March/April
`1968
`U.S. Patent No. 5,714,520
`Complaint from Civil Action No. 14-cv-00160-RGA (D. Del.),
`Dkt. 1 (filed February 6, 2014)
`Waiver of Service of Summons from Civil Action No. 14-cv-
`00160-RGA (D. Del.), Dkt. 5 (filed March 10, 2014)
`September 6, 2007 Response to Office Action, U.S. Serial
`No. 10/616,709
`July 13, 2012 Office Action, U.S. Serial No. 10/616,709
`December 16, 2010 Response to Office Action, U.S. Serial
`No. 10/616,709
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`
`1017
`
`1018
`1019
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`1021
`1022
`
`1023
`
`Exhibit # Reference
`1020
`February 4, 2013 Response to Office Action, U.S. Serial
`No. 10/616,709
`May 15, 2013 Interview Summary, U.S. Serial No. 10/616,709
`May 15, 2013 Notice of Allowability and Examiner's Amendment,
`U.S. Serial No. 10/616,709
`Excerpts from "Plaintiff Fresenius Kabi USA, LLC's Opening
`Claim Construction Brief" in Civil Action No. 14-cv-00160-RGA
`(D. Del.)
`Webster's Third New International Dictionary (2002) selected page
`Colas, "Silicones in Pharmaceutical Applications," Dow Corning
`Healthcare Industries (2001)
`Hawley's Condensed Chemical Dictionary (13th ed. 1997)
`Dutch Diprivan® Registration, 10 mg SmPC RVG 25809
`Certified English-LanguageTranslation of Exhibit 1027
`Excerpts from file history of U.S. Patent No. 6,576,245
`(Lundgren et al.)
`Declaration of Peggy Frandolig with attached Exhibits A and B
`(Exhs. 1011, 1012).
`Publication WO 20000012043 (Lungren)
`In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 U.S. App.
`LEXIS 1699, Slip. Op. at 16, 19 (Fed. Cir. Feb. 4, 2015)
`
`1024
`1025
`
`1026
`1027
`1028
`1029
`
`1030
`
`1031
`1032
`
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
`
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`Dr. Reddy's Laboratories, Inc. ("Dr. Reddy's" or "Petitioner") requests
`
`inter partes review of claims 1, 13-15, 17, 18, 20, and 24-28 of U.S. Patent
`
`No. 8,476,010 ("the '010 Patent") (Exh. 1001).
`
`NOTICE OF LEAD AND BACKUP COUNSEL
`
`Lead Counsel:
`William L. Mentlik
`(Reg. No. 27,108)
`WMentlik.ipr@ldlkm.com
`Postal and Hand-Delivery Address
`600 South Avenue West
`Westfield, NJ 07090
`Telephone: (908) 518-6305
`Fax: (908) 654-7866
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST
`
`Backup Counsel:
`Michael H. Teschner
`(Reg. No. 32,862)
`MTeschner.ipr@ldlkm.com
`Postal and Hand-Delivery Address
`600 South Avenue West
`Westfield, NJ 07090
`Telephone: (908) 518-6313
`Fax: (908) 654-7866
`
`The Real-Parties-In-Interest for this Petition are Petitioner Dr. Reddy's
`
`Laboratories, Inc., and its parent company, Dr. Reddy's Laboratories, Ltd., an
`
`Indian company.
`
`NOTICE OF RELATED MATTERS
`
`Patent Owner has asserted the '010 Patent against Petitioner and its parent
`
`company, Dr. Reddy's Laboratories, Ltd., in a litigation currently pending in the
`
`United States District Court for the District of Delaware. Fresenius Kabi USA,
`
`LLC v. Dr. Reddy's Labs., Ltd. et al., 14-160-RGA (D. Del.) ("the Litigation").
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
`
`
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`NOTICE OF SERVICE INFORMATION
`
`Please address all correspondence to the lead and backup counsel at the
`
`address shown above. Petitioner also consents to electronic service by e-mail
`
`at: WMentlik.ipr@ldlkm.com and MTeschner.ipr@ldlkm.com.
`
`GROUNDS FOR STANDING
`
`Petitioner certifies that the patent for which review is sought is available for
`
`inter partes review, and that Petitioner is not barred or estopped from requesting an
`
`inter partes review on the grounds identified in the petition. The petition is filed
`
`within one year of the February 6, 2014 filing of the Complaint in the Litigation
`
`(Exh. 1015) and less than one year before Petitioner's waiver of service on
`
`February 10, 2014 (Exh. 1016). The petition is thus timely under 35 U.S.C.
`
`§ 315(b).
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests that claims 1, 13-15, 17, 18, 20, and 24-28 of the
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`'010 Patent be held unpatentable based on the following grounds:
`
`Ground 1. Claims 1, 13-15, 17, 18, 20, and 24-28 are obvious over the
`
`1997 PDR entry
`
`for Diprivan®
`
`(Exh. 1005),
`
`in
`
`light of R. Farinotti,
`
`"Physio-chemical Interactions and Storage of Diprivan®," Ann. Fr. Anesth.
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`Reanim., 1994, 13:453-456
`
`("Farinotti")
`
`(Exh. 1006)1 and U.S. Patent
`
`No. 5,114,794 ("Sudo '794 Patent") (Exh. 1010). See 35 U.S.C. § 103(a).2
`
`Ground 2. Claims 1, 13-15, 17, 18, 20, and 24-28 are obvious to try over
`
`the 1997 PDR entry for Diprivan®, in light of Farinotti and the Sudo '794 Patent.
`
`See 35 U.S.C. § 103(a).
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`
`A petition for inter partes review must demonstrate "a reasonable likelihood
`
`that the petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition." 35 U.S.C. § 314(a). This Petition meets that threshold.
`
`All of the elements of claims 1, 13-15, 17, 18, 20, and 24-28 of the '010 Patent are
`
`taught or suggested in the prior art, as explained below in the proposed grounds of
`
`unpatentability. The reasons to combine the cited references, where applicable, are
`
`established under 35 U.S.C. § 103(a).
`
`
`1 A certified English-language translation of this French publication is included as
`
`Exhibit 1007.
`
`2 The pre-AIA version of § 103 applies in this proceeding, because the '010 Patent
`
`has an effective filing and issue date before March 16, 2013. The effective filing
`
`date is July 10, 2003.
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`The '010 Patent is directed to a propofol formulation packaged in a
`
`
`
`I.
`
`container. Propofol is a well-known intravenous anesthetic agent that was first
`
`approved for marketing in the United States in 1989 and is sold under the brand
`
`name Diprivan®. The claims of the '010 Patent differ from prior art Diprivan®, if at
`
`all, only in the claims' requirement of a "siliconized" rubber stopper or a metal
`
`closure as the container closure, rather than an ordinary rubber stopper. Yet,
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`siliconized rubber stoppers were well known at the time of the alleged invention,
`
`were known to be used in parenteral drug packaging, and were known to have
`
`advantages, such as lubricity and machinability, over unsiliconized stoppers.
`
`These important advantages permitted siliconized stoppers to move more
`
`efficiently in automated packaging equipment and be more easily inserted into
`
`containers.
`
`Such design advantages provided ample motivation to modify prior art
`
`Diprivan® to replace its unsilconized stoppers with siliconized versions. This minor
`
`and routine substitution would have been highly obvious to a person of ordinary
`
`skill in the art ("POSA"). And because of the known attributes of siliconized
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`stoppers, there would have been a reasonable expectation of being able to use them
`
`successfully as closures in a propofol container system.
`
`In the specification of the '010 Patent and during patent prosecution, the
`
`patentee focused on the possible instability of propofol formulations containing
`
`less than 10% of a soybean oil solvent when exposed to some uncoated rubber
`
`stoppers. But because the challenged claims include solvent concentrations of
`
`10%, this presents an entirely hypothetical problem. As the '010 Patent admits, at
`
`10% w/v of soybean oil, propofol formulations, including commercial Diprivan®,
`
`are completely stable with whatever stopper is used. Thus, there is no stability
`
`"problem" to be solved. And given that a POSA would have had ample motivation
`
`to replace the Diprivan® stopper with a siliconized version for reasons separate and
`
`apart from stability, the use of a different stopper was an unpatentable
`
`modification.
`
`Furthermore, given the relatively small number of available closure options,
`
`it would have been obvious to try any one of them and it would have been
`
`reasonable to expect that siliconized rubber stoppers would prove successful.
`
`II. THE CLAIMS UNDER CONSIDERATION
`
`1. A sterile pharmaceutical composition of propofol in a container,
`comprising:
`
`
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`a container which includes a closure and a composition in the container,
`and
`the composition in the container comprising from 0.5% to 10% by
`weight propofol and from about 0 to about 10% by weight solvent for
`propofol,
`where when the composition in the container sealed with the closure is
`agitated at a frequency of 300-400 cycles/minute for 16 hours at room
`temperature, the composition maintains a propofol concentration
`(w/v) measured by HPLC that is at least 93% of the starting
`concentration (w/v) of the propofol;
`where the closure is selected from the group consisting of siliconized
`bromobutyl rubber, metal, and siliconized chlorobutyl rubber.
`
`13. The sterile pharmaceutical composition in a container according to
`claim 1 wherein the solvent is a water-immiscible solvent.
`
`14. The sterile pharmaceutical composition in a container according to
`claim 13, wherein the water-immiscible solvent is selected from the group
`consisting of soybean, safflower, cottonseed, corn, coconut, sunflower,
`arachis, castor sesame, orange, limonene or olive oil, an ester of a medium
`or long-chain fatty acid, a chemically modified or manufactured palmitate,
`glycerol ester or polyoxyl, hydrogenated castor oil, a marine oil,
`fractionated oils, and mixtures thereof.
`
`15. The sterile pharmaceutical composition in a container according to
`claim 14, wherein the water-immiscible solvent is soybean oil.
`
`17. The sterile pharmaceutical composition in a container according to
`claim 1, wherein the closure is coated with a material inert to propofol.
`
`18. The sterile pharmaceutical composition in a container according to
`claim 1, wherein the closure consists essentially of a material that is itself
`inert to propofol.
`
`20. The sterile pharmaceutical composition in a container according to
`claim 1, wherein the closure comprises siliconized bromobutyl rubber.
`
`24. The sterile pharmaceutical composition in a container according to
`claim 1, wherein when the composition is stored in the container sealed
`with the closure for at least two months, the composition maintains a
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`propofol concentration (w/v) measured by HPLC that is at least about 95%
`of the starting concentration (w/v) of the propofol.
`
`25. The sterile pharmaceutical composition in a container according to
`claim 24, wherein the composition is stored in the container sealed with the
`closure in a controlled environment of about 40° C. and about 75% relative
`humidity for at least two months.
`
`26. The sterile pharmaceutical composition in a container according to
`claim 1, where when the composition in the container sealed with the
`closure is agitated at a frequency of 300-400 cycles/minute for 16 hours at
`room temperature, the composition maintains a propofol concentration
`(w/v) measured by HPLC that is at least 95% of the starting concentration
`(w/v) of the propofol.
`
`27. The sterile pharmaceutical composition in a container according to
`claim 1, where when the composition in the container sealed with the
`closure is agitated at a frequency of 300-400 cycles/minute for 16 hours at
`room temperature, the composition maintains a propofol concentration
`(w/v) measured by HPLC that is at least 97% of the starting concentration
`(w/v) of the propofol.
`
`28. The sterile pharmaceutical composition in a container according to
`claim 1, where when the composition in the container sealed with the
`closure is agitated at a frequency of 300-400 cycles/minute for 16 hours at
`room temperature, the composition maintains a propofol concentration
`(w/v) measured by HPLC that is at least 99% of the starting concentration
`(w/v) of the propofol.
`
`III. THE SPECIFICATION AND
`PROSECUTION HISTORY OF THE '010 PATENT
`A. The Specification Of The '010 Patent
`
`The '010 Patent is directed to a propofol formulation in a container (a vial or
`
`syringe) having a closure. As the specification explains, because propofol is
`
`water-insoluble, prior art propofol compositions, including commercial Diprivan®,
`
`commonly used 10% soybean oil as a solvent for the propofol. (Exh. 1001, 1:20,
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`2:33-36, 25:10-46.) According to the patentee, however, it was known that using
`
`10% soybean oil created a risk of hyperlipidemia in some patients undergoing
`
`long-term sedation. (Id., 2:5-19.) This created a motivation in the prior art to try
`
`reduced levels of oil. Neither this problem, nor the idea of reducing the amount of
`
`soybean oil, was discovered by these inventors. (Id., 1:66-2:4.)
`
`The patentee reportedly learned that propofol compositions with low
`
`soybean oil content (from 0-5% soybean oil) degraded to varying degrees when
`
`stored in containers having certain bromobutyl rubber stoppers. (Id. at 3:45-4:2,
`
`25:27-37.) The patentee's proposed solution was simply to try a different known
`
`stopper. (Id. at 3:59-4:2, 4:47-58.) Existing stoppers included those coated or
`
`treated with inert materials such as silicone polymer or Teflon/fluoropolymer. (Id.
`
`at 9:43-46.) Among siliconized stoppers, siliconized bromobutyl rubber and
`
`siliconized chlorobutyl rubber stoppers were noted as suitable and claimed. (Id.
`
`at 9:46-52.) The patentee also claimed nonreactive metal stoppers. (Id.
`
`at 10:4-10.)
`
`In a series of experiments memorialized in Examples 31-34, the patentee
`
`tested propofol formulations free of soybean oil and reported that they exhibited
`
`instability when stored in vials with halogenated, uncoated rubber stoppers. (Id.
`
`at 23:16-25:45.) These tests used an accelerated stability technique involving
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`shaking of the container at a rate of 300-400 cycles/minute for 16 hours to test for
`
`propofol degradation. (Id. at 23:21-34, 25:20-24.) Improvements in stability (i.e.,
`
`less propofol degradation) were observed when propofol formulations containing
`
`3% soybean oil were used. (Id., Example 33, 24:37-61.) Indeed, for some
`
`propofol formulations, acceptable stability was achieved even with low levels of
`
`oil despite the use of conventional, uncoated bromobutyl rubber stoppers. (Id.
`
`(93% or better stability for "Rubber 2" and "Rubber 3" bromobutyl stoppers).)
`
`Only one particular bromobutyl rubber stopper, identified as "Rubber 1," had
`
`unacceptable stability.
`
`In Example 34, the patentee compared the stability of commercially
`
`available Diprivan® having 10% soybean oil with other formulations having 5%
`
`soybean oil or less, when exposed to the Rubber 1 bromobutyl rubber stopper. A
`
`formulation with no soybean oil (0%) was reported to have 77% propofol
`
`degradation. At 3% soybean oil, the patentee reported 47% degradation, and at 5%
`
`soybean oil, it reported 17% degradation. (Id. at 25:27-37.) At 10% soybean oil,
`
`i.e.,
`
`for
`
`commercially
`
`available Diprivan®,
`
`there was virtually no
`
`degradation ____ more than 99% of propofol was retained. (Id., 25:32, 25:37.) No
`
`tests were conducted for any formulation containing soybean oil at levels
`
`between 5 and 10%.
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`These examples confirm that Diprivan®, having 10% soybean oil, was stable
`
`no matter which stopper was used. (Id., 25:38-39 ("The data shows that the oil in
`
`the formulation protected propofol from degradation.").) Some halogenated rubber
`
`stoppers, on the other hand, were found to destabilize propofol formulations
`
`containing 5% soybean oil or less. If and when this occurred, however, the patent
`
`taught that it could be addressed by merely using a different closure, such as a
`
`different bromobutyl rubber stopper or one that had been coated with, for example,
`
`silicone or Teflon. (Id., 9:43-46, 24:10-61, Exs. 32, 33.)
`
`B.
`
`The Prosecution History Of The '010 Patent
`
`The '010 Patent underwent 10 years of prosecution, during which the
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`patentee repeatedly argued that the inert closure of its alleged invention
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`distinguished the claims over the prior art. (See, e.g., September 6, 2007 Response
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`(Exh. 1017), at 11-12.) For nearly a decade, the examiner rejected those
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`contentions. (See, e.g., July 13, 2012 Office Action (Exh. 1018), at 5.) In the
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`interim, the patentee amended the solvent limitation of application claim 1 (which
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`became claim 1 of the '010 Patent), by modifying the original phrase "less than
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`about 10% by weight solvent for propofol" to recite "less than 10% by weight
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`solvent for propofol." (Dec. 16, 2010 Amendment (Exh. 1019), at 2.) This
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`amendment, however, also did not result in allowance of the claims.
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`On February 4, 2013, the patentee amended application claim 1 to require
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`that the closure be "selected from the group consisting of siliconized bromobutyl
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`rubber, a non-rubber selected from the group consisting of metal, plastics, and
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`mixtures thereof, and siliconized chlorobutyl rubber." (February 4, 2013 Response
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`(Exh. 1020), at 2.) During an April 30, 2013 interview, the examiner stated that if
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`this proposed claim eliminated "plastic" closures, it would be allowable. (May 15,
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`2013 Interview Summary (Exh. 1021), at 6.) According to the examiner, although
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`one of the cited references disclosed inert Fluorotec coatings, it did not disclose
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`other inert materials for the closure that the claims recited, such as siliconized
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`rubber. (Id.)
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`The examiner issued a Notice of Allowability on May 15, 2013, allowing all
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`pending claims based on an Examiner's Amendment in which the term "plastic"
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`was removed from the closure limitation of claim 1. (May 15, 2013 Examiner's
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`Amendment (Exh. 1022), at 2.) The amendment also changed the phrase "less than
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`10% by weight solvent for propofol" to "from about 0 to about 10% by weight
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`solvent for propofol." (Id.) The applicants did not object to these amendments,
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`and in fact approved them. (Id.) The patent issued on July 2, 2013. It is clear
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`from this prosecution history that the claim amendments requiring siliconized
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`rubber or metal stoppers were what resulted in allowance of the claims.
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`
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`IV. CLAIM CONSTRUCTION
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`In inter partes review, a claim term is given its "broadest reasonable
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`construction in light of the specification." See 37 C.F.R. § 42.100(b); see also
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`In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 U.S. App. LEXIS 1699,
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`Slip. Op. at 21 (Fed. Cir. Feb. 4, 2015) (Exh. 1032).
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`A.
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`"From About Zero To About 10%"
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`Claim 1 requires that the propofol composition have "from about 0 to about
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`10% by weight solvent for propofol." The patent owner recently construed this
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`phrase in the Litigation to mean approximately 0 to approximately 10% solvent by
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`weight, including compositions with 10% soybean oil. (See Exh. 1023, at 5 (citing
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`Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1369-70 (Fed. Cir. 2005))
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`for the proposition that "about" means "approximately"; id. at 5-6 (asserting that
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`"there is no support in the intrinsic record" for a construction that excludes exactly
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`10% by weight solvent).)
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`To support this construction, the patent owner cited certain intrinsic
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`evidence, including a passage from the specification that states that "the water
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`miscible solvent or the water-immiscible solvent is present in an amount that is
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`preferably from 0 to 10% by weight of the composition" (Exh. 1001, at 5:36-38)
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`(Exh. 1023, at 6.) The patent owner also cited portions of the prosecution history
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`12
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`
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`in which the examiner amended the term "less than 10% by weight solvent for
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`propofol" (see Exh. 1019, at 2) to "from about 0 to about 10% by weight solvent
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`for propofol" (Exh. 1022, at 2). (Exh. 1023, at 7.)
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`
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`Petitioner asserts in the Litigation, under the claim construction standard
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`applicable there, that the claim term should be construed more narrowly to exclude
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`10% solvent. Here, however, Petitioner accepts the patent owner's position as the
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`broadest reasonable
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`interpretation of
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`the phrase
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`in
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`inter partes review.
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`Accordingly, Petitioner accepts as the broadest reasonable construction for
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`purposes of this proceeding the patent owner's construction of "from about zero to
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`about 10% by weight solvent for propofol" to mean from approximately zero to
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`approximately 10% solvent by weight, a range that includes 10%. The reference to
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`"about 10% by weight solvent," in accordance with the explanation in the patent, is
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`"meant to be weight percent by volume of the composition." (Exh. 1001, 5:33-35.)
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`B.
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`"Siliconized"
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`Although "siliconized" is not defined in the specification or prosecution
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`history of the '010 Patent, its definition is well known, and it means surface-treated
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`or coated with a silicone. (Exh. 1002, Declaration of Thomas Feinberg ("Feinberg
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`Decl.") ¶ 10; Webster's Third New Int'l Dictionary 2118 (2002) (Exh. 1024,
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`at 2118), defining "siliconize" as "to treat or coat (as with a lens) with a silicone";
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`13
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`Colas, "Silicones in Pharmaceutical Applications," Dow Corning Corporation
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`(2001) (Exh. 1025), at 19 ("Siliconisation encompasses the surface treatment of
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`many parenteral packaging components with
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`silicones."); Smith et al.,
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`Siliconization of Parenteral Drug Packaging Components, 1988, 42 J. of
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`Parenteral Sci. and Tech. (1988 Supp.) ("Smith et al.") (Exh. 1004), at S4, S8-S9,
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`describing "siliconization" of parenteral drug packaging components by applying
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`silicones.) "Silicone," in turn, refers to polymer substances including siloxanes,
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`and thus having silicon-oxygen-silicon bonds. (Exh. 1002, Feinberg Decl. ¶ 10;
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`Exh. 1004, at S12, defining "silicone" as "a general term describing a solid or
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`liquid polymer made up of silicon-oxygen-silicon bonds in which hydrocarbon
`
`groups are bonded directly to all or a portion of the silicon atoms"; Hawley's
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`Condensed Chemical Dictionary 997 (13th ed. 1997) (Exh. 1026), defining
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`"silicone" as "any of a large group of siloxane polymers based on a structure
`
`consisting of alternate silicon and oxygen atoms with various organic radicals
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`attached to the silicon.").
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`Accordingly "siliconized," in the context of the challenged claims and the
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`applicable claim construction standard, refers to a closure that is surface-treated or
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`coated with one or more siloxane polymers. (Exh. 1002, Feinberg Decl. ¶ 10.)
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`Such coatings include silicone oil, as well as other siloxane polymers that are
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`bonded and/or bridged to the surface of the closure. (Id. ¶ 11.)
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`C.
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`"Inert To Propofol"
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`The phrase "inert to propofol" in challenged claims 17 and 18 means having
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`no significant reactivity to propofol. This interpretation is consistent with how a
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`POSA would understand this phrase in light of the specification, which uses the
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`terms "inert" and "non-reactive" interchangeably. (Exh. 1002, Feinberg Decl. ¶ 12;
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`Exh. 1001, at 1:8-10 ("the invention pertains to propofol formulations that are
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`stored in containers having non-reactive, or inert closures"); see also id. 3:63-4:2,
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`4:47-48, 8:41-42.) As the specification further explains, an "inert" closure does not
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`cause "significant" degradation of the propofol formulation. (Id. at 4:46-50.)
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`Thus, in the context of the '010 Patent, "inert" means having no significant
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`reactivity to propofol. (Exh. 1002, Feinberg Decl. ¶ 12.)
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`V. THE LEVEL OF ORDINARY SKILL IN THE ART
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`Factors relevant to determining the level of skill in the art include: the
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`educational level of the inventors, the types of problems encountered in the art,
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`prior art solutions to those problems, the rapidity with which innovations are made,
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`the sophistication of the technology, and the educational level of active workers in
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`the field. Daiichi Sankyo Co. v. Apotex Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
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`15
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`Case IPR2015-00715
`Corrected Petition for Inter Partes Review
`Attorney Docket No. REDDY 7.1R-004
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`
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`In the field of the alleged invention, a person of ordinary skill in the art
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`would have been someone with substantial research or industry experience in
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`pharmaceutical drug product development, including experience with sterile drugs
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`and their packaging, and having a master's degree or doctorate in a related
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`technical field, such as analytical, physical or organic chemistry, chemical
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`engineering, pharmaceutics or related subject matter. (Exh. 1002, Feinbe