`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`INNOPHARMA LICENSING, LLC.
`
`Petitioner
`
`V.
`
`ASTRAZENECA AB
`
`Patent Owner
`
`
`
`Case IPR2017-00904
`
`U.S. Patent 6,774,122
`
`
`DECLARATIONOF LISBETH ILLUM,Ph.D. INSUPPORT OF PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`AstraZeneca Exhibit 2001 p. |
`InnoPharma Licensing LLC v. AstraZeneca AB IPR2017-00904
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`1
`
`TH)
`
`INTRODUCTIONoo. cccceeceeeeceeeceeeceneeeeeseeneeeseceeeseeseeeneeeeeeeteneeneeneetens 1
`
`QUALIFICATIONS AND EXPERIENCE.....0...0cccccccecceescetseeseeseeseesseteeees 1
`
`HI) MY UNDERSTANDING OF THE PROCEEDING....0...0. cc cccccceeetseteees 4
`
`TV) MY OPINIONS AND THEIR BASES 0.00... cccccccccccecceeeetsenseeseeseenseteees 4
`
`V)
`
`VI)
`
`DOCUMENTS CONSIDERED 1.0... eceeeeetees tects eeteeseeteteeteeteeteesees 5
`
`THE ’122 PATENT SPECIFICATION AND CLAIMS1... cece 6
`
`VII) PERSON OF ORDINARYSKILL IN THE ART ou... cece eceeseteteees 9
`
`VITT) LEGAL PRINCIPLES 200... ccccccccccccccccceeee cece seeesenseesessecssesseesseesesseeneeteeees 9
`
`TX) CLAIM CONSTRUCTION ..0...cccccccccccccccceceeeceneesseesseeseeeessesseeseensesseenes 11
`
`X)
`
`STATE OF THE RELEVANTART .ou..occcccccccccccccceeerseeseeteetetnseeseensees 14
`
`A)—Formulation Background... cece eccececeeeeeeeneecsseetseeeeeeeeeseenas 14
`B)
`The Claimed Blood Plasma Levels Are Critical To The
`INVENTIONS 00... eee cceecceecceeeceeceeeeeeeeeeseesseeeseeeseeeseeeseeesseetseeteeneeeteeniess 15
`
`Formulation Options 000.0... ccc cccc ccc ccsececeecsseeesseeeessesesseeeeseeeesseenes 17
`C)
`XI) REFERENCES CITED IN THE PETITION AND BURGESS
`DECLARATION0... cccccceeceeceeccesceeeeceseceeeeeesenseceeeeceeeecneessecseeseceeteeneesreneets 20
`
` McLeskey (Ex. 1008)... cccccrsecenseecnseeesseeeseeseeeeneeeeiees 22
`A)
`1)|McLeskey Describes A “Treatment Failure”...........0.00..005. 23
`2)|McLeskey Did Not Test Formulations For Human Use........... 23
`3)|McLeskey Provides No Pharmacokinetic Data..........00000.000 25
`4)—McLeskey Does Not Disclose The Units For The
`Excipient Percentages .0......0.0.ccc ccc cccesecccsseceeeessseseesaeeeenseeecses 25
`5)|McLeskey Does Not Disclose Any Solubility
`Tnforimation 0.2... cccceccceecceecceeecesecescecsseeeseeeseeeeeeeseetseesseesseeses 30
`
`Howell 1996 (Ex. 1007) oo. .ccccccccccccccceceecceseeneensecseessenseeeeneeenseas 33
`B)
` DeFriend (Ex. 1038)... ccc ccs cctecceeecsseeeesseeesseecssesesseeessieenes 36
`C)
`D)—Riffkin (Ex. 1033) ooo cece ceeeesceneeesecseeseetseeseesseeseeseeteenanees 39
`E)
`O’Regan (Exhibit 1009) ooo ccc cceccecteeecrseeetseesseeeneeeniees 43
`F)
`Dukes 1989 (Ex. 1047) ....ccccccccccccccceceteceseceseeseetseeseessecsseeseeneeenseas 45
`
`AstraZeneca Exhibit 2001 p. 2
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`1
`
`TH)
`
`INTRODUCTIONoo. cccceeceeeeceeeceeeceneeeeeseeneeeseceeeseeseeeneeeeeeeteneeneeneetens 1
`
`QUALIFICATIONS AND EXPERIENCE.....0...0cccccccecceescetseeseeseeseesseteeees 1
`
`HI) MY UNDERSTANDING OF THE PROCEEDING....0...0. cc cccccceeetseteees 4
`
`TV) MY OPINIONS AND THEIR BASES 0.00... cccccccccccecceeeetsenseeseeseenseteees 4
`
`V)
`
`VI)
`
`DOCUMENTS CONSIDERED 1.0... eceeeeetees tects eeteeseeteteeteeteeteesees 5
`
`THE ’122 PATENT SPECIFICATION AND CLAIMS1... cece 6
`
`VII) PERSON OF ORDINARYSKILL IN THE ART ou... cece eceeseteteees 9
`
`VITT) LEGAL PRINCIPLES 200... ccccccccccccccccceeee cece seeesenseesessecssesseesseesesseeneeteeees 9
`
`TX) CLAIM CONSTRUCTION ..0...cccccccccccccccceceeeceneesseesseeseeeessesseeseensesseenes 11
`
`X)
`
`STATE OF THE RELEVANTART .ou..occcccccccccccccceeerseeseeteetetnseeseensees 14
`
`A)—Formulation Background... cece eccececeeeeeeeneecsseetseeeeeeeeeseenas 14
`B)
`The Claimed Blood Plasma Levels Are Critical To The
`INVENTIONS 00... eee cceecceecceeeceeceeeeeeeeeeseesseeeseeeseeeseeeseeesseetseeteeneeeteeniess 15
`
`Formulation Options 000.0... ccc cccc ccc ccsececeecsseeesseeeessesesseeeeseeeesseenes 17
`C)
`XI) REFERENCES CITED IN THE PETITION AND BURGESS
`DECLARATION0... cccccceeceeceeccesceeeeceseceeeeeesenseceeeeceeeecneessecseeseceeteeneesreneets 20
`
` McLeskey (Ex. 1008)... cccccrsecenseecnseeesseeeseeseeeeneeeeiees 22
`A)
`1)|McLeskey Describes A “Treatment Failure”...........0.00..005. 23
`2)|McLeskey Did Not Test Formulations For Human Use........... 23
`3)|McLeskey Provides No Pharmacokinetic Data..........00000.000 25
`4)—McLeskey Does Not Disclose The Units For The
`Excipient Percentages .0......0.0.ccc ccc cccesecccsseceeeessseseesaeeeenseeecses 25
`5)|McLeskey Does Not Disclose Any Solubility
`Tnforimation 0.2... cccceccceecceecceeecesecescecsseeeseeeseeeeeeeseetseesseesseeses 30
`
`Howell 1996 (Ex. 1007) oo. .ccccccccccccccceceecceseeneensecseessenseeeeneeenseas 33
`B)
` DeFriend (Ex. 1038)... ccc ccs cctecceeecsseeeesseeesseecssesesseeessieenes 36
`C)
`D)—Riffkin (Ex. 1033) ooo cece ceeeesceneeesecseeseetseeseesseeseeseeteenanees 39
`E)
`O’Regan (Exhibit 1009) ooo ccc cceccecteeecrseeetseesseeeneeeniees 43
`F)
`Dukes 1989 (Ex. 1047) ....ccccccccccccccceceteceseceseeseetseeseessecsseeseeneeenseas 45
`
`AstraZeneca Exhibit 2001 p. 3
`
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`G)
`
`Gellert Declaration (Ex. 1020) oo. ccccccrteeesteeeerseseseeeesieenes 47
`1)
`Background Of The Gellert Declaration..........00.000. cece 47
`2)
`The Gellert Declaration Describes Extensive
`Experimentation Based On Information Not KnownIn
`The Art oo. ccccccccccccccescecscceceescesseecseecssecsseceecnaeeseeneenteeesees 48
`
`XI) THE SKILLED FORMULATOR’S APPROACH TO
`FORMULATING FULVESTRANT........cccccccecccceeeeteeeseenseessetseeseenseenseas 59
`
`A)
`
`B)
`C)
`D)
`
`The Fulvestrant Art Taught Once-A-Day Administration And
`Once-A-Month Administration .......0....000ccccceccceceesecceseeeeeeeeeeteeeteenes 59
`
`The Formulator Would Prefer Oral Fulvestrant Formulations........... 62
`The Formulator Would Not Have Excluded Oral Formulations........ 64
`The Formulator Would Be Concerned About Intramuscular
`Administration Of Fulvestrant ....0.0.0.000cccccccccccccccetseceseeeesseeeteeeniens 70
`
`E)—The Prior Art Disclosed Numerous Fulvestrant Formulations........... 71
`XII) NON-OBVIOUSNESS OVER HOWELL (GROUND ONE)...............0064. 74
`
`A)
`
`B)
`
`C)
`
`The Board Already Rejected The Same Argument Based On
`Routine Experimentation .........000 cece cece ceccsseeeeseeeesessseeessseeeeneeees 75
`The Skilled Formulator Would Not Have Been Motivated To
`Combine The Howell Reference With The Specific Amounts
`Of Specific Excipients.....0...cc ccc cece cccsccccsseceessesesessseceesseesenseeeeaas 77
`1)
`The Choices Of Potential Excipients Would Be Infinite.......... 77
`2)
`Routine Experimentation Would Not Lead To The
`Claimed Excipient Amount.......00...c0ccceccccccecececeeceeseeeensees 84
`Dr. Burgess Fails To Address a Reasonable Expectation Of
`Success Regarding The Physiological Effects Of The
`Formulation .......0..0ccccccccceccecccceseseseeeeensecsaeeeseeeseeeseesseesseeeseenseesseenses 88
`
`D)
`
`There Is No Way To Predict How A Formulation Will Behave
`Upon Injection... ccc cece cece ccceccecsseceeseeseceeeesesseesessseeeesseeseneeees 94
`XIV) NON-OBVIOUSNESS OVER HOWELL COMBINED WITH
`MCLESKEY (GROUND TWO)......occcccccccccescetcceseeeseeneetseesecssenseeseenseenseas 97
`
`A)
`
`B)
`
`The Board Already Considered Howell As The Starting Point
`And Correctly Denied Institution... ccccc cece eeentseeeennsees 97
`No Reason To Combine Howell And McLeskey...........0.... cee 98
`
`ii
`
`AstraZeneca Exhibit 2001 p. 4
`
`
`
`TABLE OF CONTENTS
`(continued)
`
`1)
`
`There Would Have Been No Reason To Assume That
`The Howell Formulation Was Disclosed In The Prior Art.......99
`
`Page
`
`2)
`
`The Skilled Artisan Would Not Choose A Formulation
`Based Solely On Fulvestrant Concentration..............000..0000. 101
`3)|McLeskey Disparaged The Results Of Howell 1996............. 103
`4)
`The Formulator Would Not Have Found McLeskey............... 104
`5)|McLeskey Described Fulvestrant As A “Treatment
`Fanlure”? o.oo ccccccecseccseceeseecsseeesseeeeseeeeesesieeesseseneeeeees 105
`
`C)
`
`D)
`
`The Skilled Formulator Would Not View The Castor Oil-Based
`Formulation Of McLeskey As “Matching” Howell........0000000000000. 107
`Other Prior Art Formulations Were Closer To Howell Than
`MCLeskey 000.0000. cccccccccccccccsccecenseeesecseeseseesecssseecsseesesueseesssesentseeeeees 111
`The Combination Of Howell 1996 And McLeskey Could Not
`Have Been Expected To Result In The Claimed Inventions. ........... 114
`1)|McLeskey Used Experimental Animal Formulations That
`Would Not Be Viewed As Suitable For Human Use............. 115
`
`E)
`
`2)
`
`3)
`
`4)
`
`No Approved Product Used The Same Combination Of
`Excipients As McLeskey .00......000ccccccccccecccsccecseeeensseeseesaeens 116
`Making The McLeskey Formulation Would Introduce
`Additional Unpredictability ...0.0000000 cece cece cceceeeeeeeeeens 117
`The McLeskey Formulation Would Not Be Expected To
`Work When Administered Monthly Instead Of Weekly........ 118
`5)|The McLeskey Formulation Would Not Be Expected To
`Work When Administered Intramuscularly Instead Of
`Subcutancously 0.00.00. ccc ccc cece cecssececsseeecesseeseesaesessseeeenseeess 119
`The Concentration/Castor Oil Theory Of Dr. BurgessIs
`Contradicted By The Literature ......0.0000 ccc cece ecceeeeeeeee 123
`F)—The Gellert Declaration And The Sawchuk Declaration Are
`Consistent And Both Support The Patentability Of The
`Challenged Claims .........00cccc ccc cece cecssececeseeecnseeseesaeeeesteeeennneess 131
`XV) NON-OBVIOUSNESS OVER HOWELL COMBINED WITH
`MCLESKEY AND O’REGAN (GROUND THREE).............0cccceeeeeees 135
`
`6)
`
`A)
`
`O’Regan Does NotFill the Fatal Gaps In InnoPharma’s
`Combination Of Howell And McLeskey.........0...00ccccccccccceeeeeeeee 135
`
`ili
`
`AstraZeneca Exhibit 2001 p. 5
`
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`XVI) UNEXPECTED RESULTS ..0...ooccccccccccccccccc cece cccecceeeecseeceesceaecsaeesaeeaeenes 137
`
`A)|The Unexpected Results Of The Claimed Inventions...............0...... 137
`B)—The Superior Solubility Of Fulvestrant In The Claimed
`Formulation Was Unexpected And Not Suggested By The Prior
`ALtee cccccctecccceccneeeeseeceeeecseeeesseecsseecseeeeseeccseeesseeeneeesiseeesseseneeseess 140
`
`XVIT) CONCLUSION0... cece ccceccseeeeeseecseeseeessescsseessssesnetesteenteseneess 143
`
`AstraZeneca Exhibit 2001 p. 6
`
`
`
`I, Lisbeth lum, Ph.D., do hereby make the following declaration:
`
`I)
`
`INTRODUCTION
`
`1.
`
`2.
`
`I am overthe age of eighteen and competent to makethis declaration.
`
`I have been retained as an expert witness on behalf of AstraZeneca
`
`AB for the above-captioned Inter Partes Review (IPR).
`
`I am being compensated at
`
`my customary rate of £500 per hour for my consultation in connection with this
`
`proceeding. My compensation is in no way dependent on the outcome of my
`
`analysis or opinions rendered in this proceeding. A copy of my curriculum vitae,
`
`which includes my educational background, work / research history, and lists of
`
`selected publications and presentations, is attached to this declaration as Exhibit A.
`
`I)
`
`QUALIFICATIONS AND EXPERIENCE
`
`3,
`
`My nameis Lisbeth Illum, Ph.D.
`
`I am a Danish citizen, born in
`
`Aalborg, Denmark in 1947. Currently, I am a resident of the United Kingdom, and
`
`
`
`have been since 1987. I gained my DanishAlevels at HorsensStatsskole in 1966,
`
`my MPharm First Class Honours Degree from the Royal Danish School of
`
`Pharmacy in 1972, and my Ph.D. and D.Sc. in Pharmaceutical Sciences in 1978
`
`and 1987, respectively, both from the Royal Danish School of Pharmacy.
`
`4,
`
`I worked asa lecturer / senior lecturer in the Royal Danish School of
`
`Pharmacy between 1972 and 1990.
`
`I upheld a Postgraduate Scholarship between
`
`1975 and 1978 and a Senior Research Fellowship between 1982 and 1985.
`
`I was a
`
`AstraZeneca Exhibit 2001 p. 7
`
`
`
`Visiting Research Fellow in the Pharmacy Department at University of
`
`Nottingham during several periods between 1981 and 1990.
`
`5.
`
`I was made a Docent(Full Professor equivalent) in the Department of
`
`Pharmaceutical Sciences, Royal Danish School of Pharmacy, in 1989.
`
`I was made
`
`a Special Professor at the University of Nottingham, UK, in the Department of
`
`Pharmaceutical Sciences in 1990, and in the Department of Chemistry in 2007.
`
`6.
`
`I was the founder, and for twelve years the Managing Director, of
`
`DanBioSyst UK Ltd. (later West Pharmaceutical Services, now ArchimedesLtd)
`
`(1989-1998), a companythat specializes in development of drug delivery systems
`
`for pharmaceutical drugs, and when sold to West Pharmaceutical Services
`
`employed 45 scientists. In addition, I was the founder and Managing Director of
`
`Phaeton Research Ltd. (2003-2005) until it was sold and the CEOof Critical
`
`Pharmaceuticals Ltd, a drug delivery company based in BioCity in Nottingham
`
`from 2007-2011.
`
`I am presently the Founder and Director of Eurocage Ltd., a drug
`
`delivery consultancy company,the directors of which also act as pharmaceutical
`
`experts in litigation cases.
`
`7.
`
`Myresearch expertise covers the area of novel drug delivery systems
`
`for difficult to formulate drugs such as peptides, proteins, polar and lipophilic
`
`small molecular weight compounds.
`
`I have extensive experience in novel
`
`AstraZeneca Exhibit 2001 p. 8
`
`
`
`approachesto the delivery of such drugs including the use of various routes of
`
`delivery such asoral, nasal, buccal, pulmonary, vaginal and parenteral.
`
`8.
`
`I have published more than 350 scientific papers (about 90 in thelast
`
`ten years) and I am amongthe top 100 mostcited scientists on pharmacology, with
`
`an h index of more than 60.
`
`I have co-edited four booksrelated to drug delivery,
`
`drug therapy, and drug transport.
`
`I am the inventor or co-inventor on nearly fifty
`
`patent family applications on novel drug delivery systems. A large number of
`
`patents has been granted worldwide from this patent portfolio.
`
`9.
`
`I have been the recipient of several scientific awards and have been
`
`elected a Fellow of the American Association of Pharmaceutical Scientists and of
`
`the Controlled Release Society as one ofthe first recipients. I have lectured widely
`
`throughout the world at conferences and workshops on drug delivery systems. I
`
`am or have been on the Editorial Boards of eleven pharmaceutical scientific
`
`journals, and a reviewer for many more journals.
`
`I was in 2008/2009 the President
`
`of the U.S.-based Controlled Release Society, with over 2000 members dedicated
`
`to the science of delivery of bioactive agents.
`
`10. A list of U.S. cases in whichI havetestified at trial or by deposition
`
`within the preceding four years is attached at Exhibit B.
`
`AstraZeneca Exhibit 2001 p. 9
`
`
`
`I) MY UNDERSTANDING OF THE PROCEEDING
`
`11.
`
`Thave been informed that this proceeding 1s a petition for Inter Partes
`
`Review before the Patent Trial and Appeal Board of the United States Patent and
`
`Trademark Office (“the Board”). I have been informedthat an Inter Partes Review
`
`is a proceeding to review the patentability of one or more issued claims in a United
`
`States patent on the groundsthat the patent is the same as or rendered obviousin
`
`view ofthe priorart.
`
`12.
`
`Ihave been informed that InnoPharmaLicensing, LLC
`
`(“InnoPharma’’) filed a Petition requesting Inter Partes Review (“Petition”) of U.S.
`
`Patent No. 6,774,122 (“the °122 Patent’’), which issued to John R Evans and
`
`Rosalind U Grundy on August 10, 2004 and is assigned to AstraZeneca AB.
`
`I
`
`have reviewedthe Petition, and understandthatit alleges that claims 1, 2, 5, and 9
`
`of the ’122 Patent are unpatentable over Howell 1996 (Ex. 1007) and,alternatively,
`
`over the combination of Howell 1996 (Ex. 1007) with McLeskey (Ex. 1008), and
`
`the combination of Howell 1996 (Ex. 1007) with McLeskey (Ex. 1008) and
`
`O’Regan (Ex. 1009).
`
`IV) MY OPINIONS AND THEIR BASES
`
`13.
`
`Ihave been asked to give my opinion on whether InnoPharma has
`
`shown with reasonable likelihood that a person of ordinary skill in the art
`
`(“POSA”) would understand claims 1, 2, 5, and 9 of the °122 Patent to be rendered
`
`AstraZeneca Exhibit 2001 p. 10
`
`
`
`obvious by: (1) Howell 1996 (Ex. 1007); (2) the combination of Howell 1996 (Ex.
`
`1007) with McLeskey (Ex. 1008); or (3) the combination of Howell 1996 (Ex.
`
`1007) with McLeskey (Ex. 1008) and O’Regan (Ex. 1009). Most of my opinions
`
`herein are a direct repeat of the opinions in my declaration submitted in support of
`
`AstraZeneca’s Preliminary Patent Owner Response in Mylan Pharmaceuticals Inc.
`
`v. AstraZeneca AB, Case IPR2016-01325 (see AstraZeneca Ex. 2001) attached
`
`hereto for the Board’s convenience as Ex. 2135 (Illum Decl.).
`
`14.
`
`As part of this opinion, I considered the level of ordinary skill in the
`
`art around January 2000, which represents the filing date of GB 0000313, to which
`
`the ’122 Patent claimspriority.
`
`15.
`
`For the reasons explained below,in my opinion, InnoPharmahasnot
`
`shownthat there is a reasonable likelihood that 1t would prevail in an inter partes
`
`review of claims 1, 2, 5, and 9 of the 7122 Patent.
`
`V)
`
`DOCUMENTS CONSIDERED
`
`16.
`
`The materials that I have considered, in addition to the exhibits to the
`
`Petition, are listed in Exhibit C. My opinionsasstated in this Declaration are
`
`based on the understanding of a POSAin the art as defined above and in § 25,
`
`below.
`
`AstraZeneca Exhibit 2001 p. 11
`
`
`
`VI) THE 7122 PATENT SPECIFICATION AND CLAIMS
`
`17.
`
`Thave been informed that the priority date of the ?122 Patentis
`
`January 10, 2000. The invention relates to “a novel sustained release
`
`pharmaceutical formulation adapted for administration by injection containing the
`
`compound [fulvestrant], more particularly to a formulation adapted for
`
`administration by injection containing the compound[fulvestrant] in solution in a
`
`ricinoleate vehicle which additionally comprisesat least one alcohol and a non-
`
`aqueousester solvent which is miscible in the ricinoleate vehicle.” Ex. 1001 at
`
`Abstract.
`
`18.
`
`The specification of the °122 Patent explains that “[f]ulvestrant shows,
`
`along with other steroidal based compounds,certain physical properties which
`
`make formulation of these compoundsdifficult.” Ex. 1001 at 2:46-48.
`
`Specifically, “[fJulvestrant is a particularly lipophilic molecule, even when
`
`compared with other steroidal compounds, and its aqueous solubility is extremely
`
`low at around 10 ngml''.” Ex. 1001 at 2:48-51.
`
`19.
`
`The inventors of the ’122 Patent “surprisingly found that the
`
`introduction of a non-aqueousester solvent which is miscible in the castor oil and
`
`an alcohol surprisingly eases the solubilisation of fulvestrant into a concentration
`
`of at least 50 mgml''.” Ex. 1001 at 5:48-51. This was surprising because “[t]he
`
`solubility of fulvestrant in non-aqueousester solvents .. . is significantly lower
`
`AstraZeneca Exhibit 2001 p. 12
`
`
`
`than the solubility of fulvestrant in an alcohol”and “in castor oil.”” Ex. 1001 at
`
`5:52-57. In addition, the inventors noted that “[s]imply solubilising fulvestrant in
`
`an oil based liquid formulation is not predictive of a good release profile or lack of
`
`precipitation of drug after injection at the injection site.” Ex. 1001 at 9:20-22.
`
`20.
`
`Therefore, the inventors further found that the claimed inventions
`
`“provide, after intra-muscular injection, satisfactory release of fulvestrant over an
`
`extended period of time.” Ex. 1001 at 8:30-32. The specification of the ’122
`
`Patent states that “[b]y use of the term ‘therapeutically significant levels’ we mean
`
`that blood plasma concentrationsof at least 2.5 ngml'', ideally at least 3 ngml’', at
`
`least 8.5 ngml", and up to 12 ngml'of fulvestrant are achievedin the patient.” Ex.
`
`1001 at 9:1-6. Further, the specification describes “extended release”as “at least
`
`two weeks, at least three weeks, and, preferably at least four weeks of continuous
`
`release of fulvestrant is achieved.” Ex. 1001 at 9:7-9. In addition, the inventors
`
`foundthat “the castor oil formulation showed a particularly even release profile
`
`with no evidence ofprecipitation of fulvestrant at the injection site.” Ex. 1001 at
`
`10:52-55.
`
`21.
`
`Independent claim 1 of the ?122 Patent is provided below.
`
`1. A method oftreating a hormonal dependent benign
`
`or malignant disease of the breast or reproductive tract by
`
`administration to a human in needof such treatment an
`
`intra-muscular injection of a pharmaceutical formulation
`
`AstraZeneca Exhibit 2001 p. 13
`
`
`
`comprising fulvestrant, a mixture of 10% weight of
`
`ethanol per volumeof formulation, 10% weight of benzyl
`
`alcohol per volume of formulation and 15% weight of
`
`benzyl benzoate per volume of formulation and a
`
`sufficient amount of a castor oil vehicle, whereby a
`
`therapeutically significant blood plasma fulvestrant
`concentration ofat least 2.5 ngml”is attained forat least
`
`2 weeksafter injection.
`
`22.
`
`Claim 2 limits claim | to a method wherein the benign or malignant
`
`disease is breast cancer.
`
`23.
`
`Independent claim 5 of the ?122 Patent is provided below.
`
`5. A method of treating a hormonal dependentbenign
`
`or malignant disease of the br[east] or reproductive tract
`
`by administration to a humanin need of such treatment
`
`an intra-muscular injection of a pharmaceutical
`
`formulation comprising fulvestrant, a mixture of 10%
`
`weight of ethanol per volume of formulation, 10% weight
`
`of benzyl alcohol per volume of formulation and 15%
`
`weight of benzyl benzoate per volume of formulation and
`
`a sufficient amount of a castor oil vehicle whereby the
`
`formulation comprises at least 45 mgml of fulvestrant.
`
`24.
`
`Claim 9 limits claim 5 to a method wherein the benign or malignant
`
`disease is breast cancer.
`
`AstraZeneca Exhibit 2001 p. 14
`
`
`
`VI) PERSON OF ORDINARYSKILL IN THE ART
`
`25.
`
`J have been asked to provide my opinion on the novelty and
`
`obviousnessof the asserted claims from the perspective of a person of ordinary
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`skill in the relevant art. The skilled person with respect to the ’122 Patent is a
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`person having a bachelor’s or advanced degree in a discipline such as pharmacy,
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`pharmaceutical sciences, endocrinology, medicine or related disciplines, and
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`having at least two years of practical experience in drug developmentand/or drug
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`delivery, preclinical models, or the clinical treatment of hormone dependent
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`diseases of the breast and reproductive tract. Because the drug discovery and
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`developmentprocess is complicated and multidisciplinary, it would require a team
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`of individuals including, at least, medical doctors, pharmacokineticists, and
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`formulators.
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`26. Asconsidered from the perspective of the formulator memberofthat
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`team, the invention of the 7122 Patent is novel, and not obvious, for the following
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`reasons.
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`VHT) LEGAL PRINCIPLES
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`27.
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`Iam notalawyer.
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`I have relied on the explanations of counsel for an
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`understanding of certain principles of U.S. patent law that govern the
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`determination of patentability. The discussion set forth below regarding the law of
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`AstraZeneca Exhibit 2001 p. 15
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`
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`obviousnessis intended to beillustrative of the legal principles I considered while
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`preparing my declaration, and not an exhaustivelist.
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`28.
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`J understand that to institute an inter partes review, InnoPharma must
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`show that there is a reasonable likelihood that it would prevail in an inter partes
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`review.
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`I am informed by counsel that there is no presumption ofvalidity. If an
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`inter partes review is instituted, InnoPharma must show unpatentability by a
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`preponderance of the evidence, and preponderance of the evidence means “more
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`probable than not.”
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`29.
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`Iam informed by counselthat for a patent claim to be invalid as
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`anticipated by a prior art reference, that reference must disclose every limitation of
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`the claim. Thus, if the limitations of a patent claim were already disclosed, in their
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`entirety, by a single prior art reference, that claim is anticipated and not novel.
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`30.
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`Iam informed by counselthat for an invention to be obvious, the
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`patent statute requires that the differences between the invention and the prior art
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`be such that the “subject matter as a whole would have been obviousat the time
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`the invention was madeto a person of ordinary skill in the art to which such
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`subject matter pertains.”
`
`31.
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`J understand that the obviousness evaluation must be from the
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`perspective of the time the invention was made. In the current proceeding,I
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`understandthat the relevant date is considered to be the earliest priority date of the
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`10
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`AstraZeneca Exhibit 2001 p. 16
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`
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`applications, which is January 10,2000. The obviousness inquiry must guard
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`against slipping into use of hindsight.
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`32.
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`J understand that even in circumstances where each componentof an
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`invention can be foundin the prior art, there must have been an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue. For an
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`invention to be found obvious, to protect against the distortion caused by hindsight
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`bias, there must be a reason that would have prompted a person of ordinary skill in
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`the relevant field to combine the elements in the way the claimed new invention
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`does.
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`33.
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`Tobe obvious, the claimed method of treatment must have been
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`among a finite numberof identified, predictable solutions to the problemsat hand.
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`IX) CLAIM CONSTRUCTION
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`34.
`
`In independent claim 1, the term “wherebya therapeutically
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`significant blood plasmafulvestrant concentration ofat least 2.5 ngml”is attained
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`for at least 2 weeksafter injection”is a claim limitation entitled to patentable
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`weight. Independent claim | does not specify the total amount of fulvestrant to
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`administer to the patient. Instead, the desired blood plasmalevel of fulvestrant, for
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`example, limits the method of claim 1 to an amountof fulvestrant that achieves and
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`maintains 2.5 ngml'' for at least two weeks after injection. The claimed methods
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`cannot be practiced without knowing the target blood plasmalevels, which then
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`11
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`AstraZeneca Exhibit 2001 p. 17
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`
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`allows administration of an appropriate amount of fulvestrant to reach those levels.
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`Hence, the blood plasmalevels absolutely inform how the method of administering
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`the fulvestrant formulation to a humanpatientis carried out.
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`35.
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`The formulator would understand “whereby a therapeutically
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`significant blood plasmafulvestrant concentration ofat least 2.5 ngml”is attained
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`for at least 2 weeks after injection” to mean that the blood plasma fulvestrant
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`concentration ofat least 2.5 ngml" is achieved and maintainedforat least two
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`weeks. The plain meaning of the words “attained” and “at least” indicate to the
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`formulator that the patient’s blood plasma level must remain at or above 2.5 for the
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`entire specified time period. This is consistent with the Board’s finding in Mylan
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`Pharmaceuticals Inc. v. AstraZeneca AB, Case IPR2016-01325, Paper No. 11
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`(Dec. 14, 2016) (Ex. 1011) (“PTAB Decision’’) which InnoPharmadoes not
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`dispute. Ex. 1011 (PTAB Decision) at 18 (“[W]e interpret ‘achieves’ in the
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`wherein clauses as meaning that the concentration of fulvestrant in a patient’s
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`blood plasmais at or above the specified minimum concentration for the specified
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`time period.”’); Petition at 18. Further, these limitations give meaning to and
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`provide defining characteristics of the method of treatment.
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`36.
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`Indeed, as the Board previously held, “rather than merely stating the
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`result of intramuscularly administering the recited formulation, [] the wherein
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`clause dictates both the administration duration and dose of the formulation, 1.e., an
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`12
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`AstraZeneca Exhibit 2001 p. 18
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`
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`amount sufficient to provide a therapeutically significant blood plasma fulvestrant
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`concentration of at least 2.5 ngml’' for at least four weeks.” Ex. 1011 at 17 (citing
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`Ex. 2136 (Robertson Decl.) at 9 37-39, Ex. 2135 (Illum Decl.) at §] 33-37. And,
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`“[t]hat these parameters are further limited in claim 2, [] further indicates that the
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`wherein clauses provide defining characteristics.” /d. (citing Ex. 2133 (Sawchuk
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`Decl.) at § 60).
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`InnoPharmadoesnot dispute this finding. Petition at 18. This
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`understanding is also supported by authoritative treatises in the art. Ex. 2080
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`(Remington’s Ch. 91) at 6 (“The objective in designing a sustained-release system
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`is to deliver drug at a rate necessary to achieve and maintain a constant drug
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`level.”) (emphasis added); see also Ex. 1010 (Order by Judge Bumb ofthe District
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`of New Jersey).
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`37.
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`The specification indicates that a goal of the invention 1s sustained
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`release. The specification describes the problem of formulating fulvestrant: “when
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`using the best oil based solvent, castor oil, we have foundthatit is not possible to
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`dissolve fulvestrant in an oil based solvent alone so as to achieve a high enough
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`concentration to dose a patient in a low volumeinjection and achieve a
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`therapeutically significant release rate.” Ex. 1001 at 5:25-30. The inventors noted
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`that “[s]imply solubilising fulvestrant in an oil based liquid formulation is not
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`predictive of a good release profile or lack of precipitation of drug after injection at
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`the injection site.” Ex. 1001 at 9:20-22. Thus, the inventors faced the problem not
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`13
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`AstraZeneca Exhibit 2001 p. 19
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`
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`only of dissolving a sufficient amount of fulvestrant in a formulation but also
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`engineering a therapeutically significant release rate and duration and furthermore
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`developing a formulation that could provide such a pharmacokinetic profile
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`without causing precipitation at the injectionsite.
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`38.
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`The inventors “surprisingly found that the introduction of a non-
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`aqueousester solvent which is miscible in the castor oil and [in] an alcohol
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`surprisingly eases the solubilisation of fulvestrant into a concentration ofat least
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`50 mgml’.” Ex. 1001 at 5:48-51. The inventorsfurther found that the claimed
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`formulations “provide, after intra-muscular injection, satisfactory release of
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`fulvestrant over an extendedperiod of time.” Ex. 1001 at 8:30-32. In addition,
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`Table 4 of the patent showedthat the claimed methods avoid precipitation that
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`occurred in other fulvestrant formulations. Ex. 1001, Table 4. The inventors
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`concluded that “the castor oil formulation showed a particularly even release
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`profile with no evidence of precipitation of fulvestrant at the injection site.” Ex.
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`1001 at 10:52-55.
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`X)
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`STATE OF THE RELEVANT ART
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`A) Formulation Background
`
`39.
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`“The development of an optimum formulation is not an easy task, and
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`many factors readily influence formulation properties.” Ex. 2081 (Remington’s
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`14
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`AstraZeneca Exhibit 2001 p. 20
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`
`
`Ch. 75) at 5. Such factors include biopharmaceutical considerations, drug factors,
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`and therapeutic considerations. Ex. 2082 (Aulton Ch. 1) at 5.
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`40. A successful formulation of an active pharmaceutical ingredient must
`
`deliver the active ingredient in such a waythatit is biologically effective. This
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`often requires meeting certain parameters, such as blood plasma concentrations
`
`and/or duration. Ex. 1091 (Ansel Ch. 4) at 5 (“The magnitude of the responseis
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`related to the concentration of the drug achievedat the site of its action.”). In such
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`cases, the delivery method and formulation must ensure that a sufficient amount of
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`the active ingredient enters the circulation when introduced into the body to deliver
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`the active ingredient to the site of action (normally via the bloodstream).
`
`B) The Claimed Blood Plasma Levels Are Critical To The Inventions
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`Al.
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`The skilled formulator would know that the release profile of a drug
`
`from the formulation, its absorption into the blood stream and henceits
`
`pharmacokinetic profile are critical factors influencing the action of the drug on the
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`patient. Ex. 1091 (Ansel Ch. 4) at 43 (“[T]he objective of pharmacokinetic dosing
`
`is to design a dosage regimen that will continually maintain a drug’s therapeutic
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`serum or plasma concentration within the drug’s therapeutic index, 1.e., above the
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`minimum effective concentration but below the minimum toxic level.”); Ex. 2080
`
`(Remington’s Ch. 91) at 5 (“The goal of any drug delivery system 1s to provide a
`
`15
`
`AstraZeneca Exhibit 2001 p. 21
`
`
`
`therapeutic amount of drug to the proper site in the body to achieve promptly, and
`
`then maintain, the desired drug concentration.”).
`
`42. Depot formulations are particularly challenging. For instance, if too
`
`much drug is released immediately from the formulation, the blood plasma
`
`concentration may reach the minimum toxic level and cause side effects. Ex. 2080
`
`(Remington’s Ch. 91) at 5. Additionally, if too much of a drug reaches the blood
`
`stream immediately after the injection and is eliminated, insufficient drug will be
`
`left at the depot to sustain the therapeutic levels over the long term. On the other
`
`hand,if too little drug reaches the blood stream immediately after injection, the
`
`therapeutic effect of the treatment could be delayed or be limited. Ex. 2080
`
`(Remington’s Ch. 91) at 5. If the release rate is inconsistent and plasmalevels
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`spike and plummet, the biological threshold necessar