UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`__________
`
`Case IPR2017-01769
`Patent 9,326,966
`__________
`
`DECLARATION OF DR. GREGORY M. ENNS
`
`Horizon Exhibit 2006
`Par v. Horizon
`IPR2017-01769
`
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`Case No. IPR2017-01769
`U.S. Patent No. 9,326,966
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`INTRODUCTION .............................................................................................................. 1
`
`QUALIFICATIONS ........................................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Education ................................................................................................................ 3
`
`Professional Experience .......................................................................................... 4
`
`Publications and Presentations ................................................................................ 6
`
`Honors and Awards................................................................................................. 6
`
`Professional Organizations and Service Activities ................................................. 7
`
`LEGAL PRINCIPLES ........................................................................................................ 7
`
`SUMMARY OF OPINIONS .............................................................................................. 9
`
`PERSON OF ORDINARY SKILL IN THE ART ............................................................ 11
`
`TECHNOLOGY BACKGROUND .................................................................................. 15
`
`VII. OVERVIEW OF THE ’966 PATENT .............................................................................. 22
`
`A.
`
`The Claims of the ’966 Patent .............................................................................. 25
`
`VIII. CLAIM CONSTRUCTION .............................................................................................. 27
`
`A.
`
`“upper limit of normal” ......................................................................................... 27
`
`IX.
`
`THE PRIOR ART DOES NOT DISCLOSE OR SUGGEST THE SUBJECT MATTER
`OF CLAIMS 1-11 AND 13 .............................................................................................. 28
`
`A.
`
`B.
`
`The Prior Art Does Not Disclose Increasing a Dosage of Glyceryl Tri-[4-
`phenyl-butyrate] in a Patient with a Fasting Plasma Ammonia Level
`Between Half the ULN and the ULN ................................................................... 28
`
`The Prior Art Provides No Reason to Adjust the Treatment Regimen of a
`Subject with a Fasting Plasma Ammonia Level in the Normal Range ................. 41
`
`1.
`
`2.
`
`The Prior Art as a Whole Provided no Reason to Increase the
`Dosage When Plasma Ammonia Levels were Already in the
`Normal or Near-Normal Range ................................................................ 43
`
`The Reported Variability in Plasma Ammonia Levels Discouraged
`Reliance on Normal Plasma Ammonia Levels in Making Dosage
`Adjustment Decisions ............................................................................... 48
`
`i
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`U.S. Patent No. 9,326,966
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`3.
`
`The Prior Art Did Not Suggest Reliance on Fasting Plasma
`Ammonia Measurements for Dosage Adjustments .................................. 54
`
`There Was No Reasonable Expectation that Administering an Initial or
`Increased Dosage to a Patient with a Plasma Ammonia Level Already in
`the Normal Range Would Confer a Treatment Benefit ........................................ 58
`
`The Prior Art Did Not Disclose or Suggest Targeting a Plasma Ammonia
`Level at or Below Half the ULN ........................................................................... 60
`
`C.
`
`D.
`
`X.
`
`CONCLUSION ................................................................................................................. 65
`
`ii
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`Case No. IPR2017-01769
`U.S. Patent No. 9,326,966
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`I, Dr. Gregory M. Enns, hereby declare as follows:
`I.
`INTRODUCTION
`
`1.
`
`I, Dr. Gregory M. Enns, have been retained by Green, Griffith & Borg-Breen LLP
`
`on behalf of Horizon Therapeutics, LLC, as an independent expert in the field of clinical
`
`biochemical genetics. My curriculum vitae establishes my qualifications in this area. (Ex.
`
`2007.) I am being compensated for the time I spend on this matter, but no part of my
`
`compensation depends directly or indirectly on the outcome of this proceeding or any related
`
`proceeding.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 9,326,966 (“the ’966
`
`patent”). (Ex. 1001.) I understand that the application for the ’966 patent was filed on
`
`December 3, 2015, as a continuation of U.S. Patent Application No. 14/816,674, filed August 3,
`
`2015, now U.S. Patent No. 9,254,278 (“the ’278 Patent”), which is a continuation of U.S.
`
`Application No. 13/775,000, filed February 22, 2013, now U.S. Patent No. 9,095,559 (“the ’559
`
`Patent”). The ’966 patent is also the subject of currently pending IPR No. 2017-01160, filed by
`
`Lupin Ltd. and Lupin Pharmaceuticals Inc. (collectively, “Lupin”). I have submitted an expert
`
`declaration on behalf of Patent Owner, Horizon Therapeutics, LLC in IPR2017-01160. I have
`
`also submitted expert declarations on behalf of Patent Owner Horizon Therapeutics, LLC in the
`
`currently pending IPR proceedings also filed by Lupin concerning the ’278 patent, Lupin Ltd. et
`
`al. v. Horizon Therapeutics, LLC, IPR2017-01159, and the ’559 patent, Lupin Ltd. et al. v.
`
`Horizon Therapeutics, Inc., IPR2016-00829. Finally, I have also submitted expert declarations
`
`on behalf of Patent Owner Horizon Therapeutics, LLC in the currently pending IPR proceedings
`
`filed by instant Petitioner Par Pharmaceutical, Inc. (“Par”) concerning the ’278 patent, Par
`
`Pharmaceutical, Inc. et al. v. Horizon Therapeutics, LLC, IPR2017-01767, and the ’559 patent,
`
`Par Pharmaceutical, Inc. et al. v. Horizon Therapeutics, LLC, IPR2017-01768.
`
`1
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`US. Patent No. 9,326,966
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`3.
`
`I understand that the ’966 patent issued on May 3, 2016, and that the ’966 patent
`
`claims priority to Provisional Application No. 61/564,668 (“the ’668 application”), filed on
`
`November 29, 2011, and Provisional Application No. 61/542,100, filed on September 30, 2011.
`
`(Ex. 1001 .) I have therefore considered the state of the art and the prior art available as of
`
`September 30, 2011.
`
`4.
`
`I understand that Petitioner has asserted that claims 1-15 of the ’966 patent are
`
`unpatentable on the grounds listed in the table below:
`
`
`
`
`
`§ 103
`
`Fernandesin View of the ’859
`Publication, optionallyin view of
`Blau, Simell and/or Lee
`
`Claims
`
`Independent Claims: 1, 6,
`9
`
`Dependent Claims: 2, 3,
`5, 8, 11
`
`Femandes in View of the ’859
`Publication, and Lee or Lichter-
`
`Dependent Claims: 4, 7,
`10
`
`Konecki, optionally in further
`view of Blau or Simell
`
`
`
`
`
`
`
`
`
`
`
`
`The ’859 Publication in view of
`Lee or Lichter-Konecki, optionally
`in fiuther View of Blau
`
`Dependent Claim: 13
`
`5.
`
`In preparing this declaration, I have considered the ’966 patent and its prosecution
`
`history, the Petition for Inter Partes Review ofNo. US. Patent 9,326,966, the Declaration of Dr.
`
`Sondheimer (Ex. 1002) (“Sondheimer”), the prior art and references identified in the Petition and
`
`the Sondheimer Declaration, my knowledge and expertise in the art, and any additional materials
`
`cited herein.
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`II.
`
`QUALIFICATIONS
`
`A.
`
`6.
`
`Education
`
`I received a Bachelor of Arts degree in Biology from Pomona College in 1984. In
`
`1987, I obtained a Diploma in Medical Science from the University of St. Andrews, Scotland. In
`
`1990, I received my U.K. Medical Degree from the University of Glasgow, Scotland.
`
`7.
`
`From 1990 to 1991, I was a Junior House Officer at the Royal Hospital for Sick
`
`Children and the Glasgow Royal Infirmary, working in both Pediatric Surgery and General
`
`Medicine. I then completed my U.S. residency training in Pediatrics at the Children’s Hospital
`
`of Los Angeles (“CHLA”), beginning as Intern and Resident from 1991 to 1994, and serving as
`
`Chief Resident from 1994 to 1995. From 1995 to 1998, I completed a fellowship in Medical
`
`Genetics at the University of California, San Francisco, including training in Clinical
`
`Biochemical Genetics from 1997 to 1998. During my training at the University of California,
`
`San Francisco I frequently diagnosed and managed patients with urea cycle disorders, including
`
`treatment with nitrogen scavenging medications, under supervision of a specialist in Biochemical
`
`Genetics.
`
`8.
`
`I am a licensed physician in California, Hawaii, and the United Kingdom. I am
`
`Board Certified in Clinical Genetics and Clinical Biochemical Genetics by the American Board
`
`of Medical Genetics and Genomics (“ABMGG”). Certification by the ABMGG in clinical
`
`genetics implies that I have a broad knowledge in human and medical genetics. Furthermore,
`
`ABMGG certification in clinical biochemical genetics means that I have further subspecialist
`
`knowledge related to biochemical genetics. In particular, this further certification implies that I
`
`have broad knowledge of: (a) basic biochemistry and genetics; (b) the application of biochemical
`
`techniques to the diagnosis and management of genetic diseases; and (c) the etiology,
`
`3
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`pathogenesis, clinical manifestations, and management of human inherited biochemical
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`disorders, including urea cycle disorders. (See Ex. 2026 (ABMGG).)
`
`B.
`
`9.
`
`Professional Experience
`
` I am a Professor at Stanford University School of Medicine, where I began as an
`
`Assistant Professor of Pediatrics. In 2006 I became an Associate Professor, and in 2015 I was
`
`promoted to Professor. Since completing my fellowship in 1998, I have also worked as a
`
`Clinical Instructor in Pediatrics at the University of California, San Francisco. While Chief
`
`Resident at CHLA, I worked as a Clinical Instructor in Pediatrics at the University of Southern
`
`California.
`
`10.
`
`During my tenure at Stanford University School of Medicine, I have provided
`
`lectures and taught numerous courses focusing on Medical Genetics and Biochemical Genetics.
`
`These lectures and courses frequently included discussion related to the diagnosis and
`
`management of urea cycle disorders. I have also taught trainees at all levels—from medical
`
`students to post-doctoral fellows—about the management of inborn errors of metabolism,
`
`including urea cycle defects. Furthermore, as an internationally recognized expert in the
`
`treatment of urea cycle disorders, I have been invited to present at regional, national, and
`
`international meetings specifically on the topic of treatment of urea cycle disorders. I have been
`
`the Director of the Biochemical Genetics Program at Stanford since my appointment in 1998. As
`
`part of my duties, I oversee the wide-ranging clinical, research, and educational goals of the
`
`Biochemical Genetics Program. In addition, I am the Director of the Medical Biochemical
`
`Genetics Residency Training Program at Stanford University, and am responsible for training
`
`post-doctoral trainees in the practice of clinical biochemical genetics.
`
`4
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` I maintain an active clinical practice that is focused on the diagnosis and ongoing
`
`11.
`
`management of patients with inborn errors of metabolism of all forms, including urea cycle
`
`disorders (“UCDs”), and currently provide ongoing treatment for approximately forty urea cycle
`
`disorder patients. In addition, I have served as a Medical Consultant at the Newborn Screening
`
`Area Service Center at Stanford since 2003, where I advise medical providers caring for
`
`neonates with positive screens for inborn errors of metabolism, including urea cycle disorders,
`
`on a daily basis. I have also participated in clinical trials using alternative pathway therapy for
`
`the treatment of urea cycle disorders.
`
`12.
`
`Over the course of my career, I have cared for roughly 70 to 100 urea cycle
`
`disorder patients. I estimate that 60% of my time currently is devoted to clinical practice, and I
`
`see approximately 600 to 700 patients with inborn errors of metabolism, or who are suspected of
`
`having a biochemical genetic or neurogenetic disorder, annually. For the urea cycle disorder
`
`patients that I manage, I prescribe nitrogen scavenging medications on nearly all patients who
`
`have not undergone liver transplantation. In these patients, I am the primary provider who
`
`adjusts nitrogen scavenging medication dosages and manages the overall care plan, including
`
`tailoring dietary treatment and emergency management. I have been the lead investigator on a
`
`clinical trial involving emergency treatment of urea cycle disorder patients with intravenous
`
`nitrogen scavenging medications, with the results of this study published in the New England
`
`Journal of Medicine in 2007. (Ex. 2028 (Enns).) In addition, because of the active involvement
`
`of our Biochemical Genetics Program in the diagnosis and management of urea cycle disorder
`
`patients, our site has recently joined the Urea Cycle Disorders Consortium (“UCDC”), the
`
`premier international collaborative consortium consisting of sites with significant experience in
`
`5
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`the diagnosis and treatment, as well as research, of urea cycle disorders that are dedicated to
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`Case No. IPR2017-01769
`U.S. Patent No. 9,326,966
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`improving the lives of individuals affected by this disorder. (Ex. 2027.)
`
`C.
`
`13.
`
`Publications and Presentations
`
` I have published at least 90 articles in peer reviewed journals, and have
`
`published articles related to urea cycle disorder diagnosis and treatment in peer reviewed
`
`journals, including the New England Journal of Medicine, Molecular Genetics and Metabolism,
`
`Obstetrics and Gynecology, and Seminars in Pediatric Neurology. I have written book chapters
`
`and invited reviews on the topics of hyperammonemia and alternative pathway therapy,
`
`including a chapter on “Hyperammonemia” in the recently published book Signs and Symptoms
`
`of Genetic Conditions: A Handbook, a book for which I am also a co-editor. (Ex. 2029.) I have
`
`also presented clinical research data related to urea cycle disorders at regional, national and
`
`international meetings.
`
`14.
`
` As a physician-scientist, I perform peer review on a regular basis for scientific
`
`journals and serve or have served on the editorial boards for the major journals in the field of
`
`Clinical Biochemical Genetics including, Molecular Genetics and Metabolism, Journal of
`
`Inherited and Metabolic Disease, and Molecular Genetics and Metabolism Reports. I have also
`
`been an ad hoc manuscript reviewer for over fifty other journals. In this capacity, I am
`
`frequently asked to review manuscripts related to urea cycle disorder research, or participate in
`
`the editorial process related to the review of such manuscripts.
`
`D.
`
`15.
`
`Honors and Awards
`
` In 2011-2012, I received the Stanford University School of Medicine Excellence
`
`in Teaching Citation. In 2011, I received the Distinguished Service Citation from the American
`
`Academy of Pediatrics. I also received the Neil Arnott Memorial Prize in Clinical Physics at the
`
`6
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`University of Glasgow in 1988. I received the CHLA Board of Directors Award for outstanding
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`service as Pediatric Chief Resident in 1995.
`
`E.
`
`16.
`
`Professional Organizations and Service Activities
`
`I am a member of several professional societies, including: The Society of
`
`Inherited Metabolic Disorders, Society for the Study of Inborn Errors of Metabolism, Western
`
`Society for Pediatric Research, the General Medical Council, U.K. and the American Society of
`
`Human Genetics.
`
`17.
`
`I have participated in public and professional service activities and have served on
`
`committees throughout my medical career. For example, I have served on the Molecular
`
`Pathology Education Committee since 2005 at Stanford University Hospital, and have served as
`
`Chair of the Newborn Screening Metabolic Disorders Guidelines Committee for the California
`
`Department of Health Services from 2009 to 2012. I was on the Board of Directors of the
`
`Society for Inherited Metabolic Disorders from 2007 to 2014 and served on the American
`
`Academy of Pediatrics Committee on Genetics from 2005 to 2011. I also formed the Stanford
`
`University Mitochondrial Interest Group in 2004, and helped establish the Bay Area
`
`Mitochondria Association in 2004. I have been active in the American College of Medical
`
`Genetics Clinical Genomics Workgroup since 2014, and have been on the National Organization
`
`for Rare Disorders (“NORD”) Scientific and Medical Advisory Committee since 2012.
`
`III. LEGAL PRINCIPLES
`
`18.
`
`I am not an attorney and offer no legal opinions. But in the course of my work, I
`
`have studied and analyzed patents and patent claims from the perspective of a person of ordinary
`
`skill in the art. In formulating my opinions and conclusions, I have been provided with an
`
`7
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`understanding of the principles of U.S. patent law that govern the issues of claim construction,
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`Case No. IPR2017-01769
`U.S. Patent No. 9,326,966
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`anticipation and obviousness.
`
`19.
`
`I understand that assessing the patentability of a patent claim involves a two-step
`
`analysis. In the first step, the claim language must be properly defined to determine its scope
`
`and meaning from the perspective of a person of ordinary skill in the art (“POSA”). I understand
`
`that the factors to consider in determining the qualifications or experience of the POSA include
`
`the type of problems encountered in the art, prior art solutions to those problems, rapidity with
`
`which innovations are made, sophistication of the technology, and educational level of active
`
`workers in the field. Accordingly, in determining the qualifications of the POSA in this context,
`
`I considered the expertise that would be required to understand the disclosure of the ’966 patent
`
`and to implement the instructions of the patent as it relates to managing and caring for complex
`
`patients who have urea cycle disorders.
`
`20.
`
`In the second step of assessing patentability of a claim, the claim at issue must be
`
`compared to the prior art to determine whether the claim is invalid.
`
`21.
`
`I have been advised that in inter partes review proceedings before the U.S. Patent
`
`and Trademark Office (“USPTO”), a patent claim receives the broadest reasonable construction
`
`in light of the specification of the patent in which it appears. I have also been advised that, at the
`
`same time, claim terms are given their ordinary and accustomed meaning as they would be
`
`understood by one of ordinary skill in the art. I have been informed that the construction of a
`
`patent claim applied during this proceeding may differ from that in a district court proceeding or
`
`a proceeding before the International Trade Commission.
`
`8
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`I discuss certain terms from the claims of the ’966 patent below and what I
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`22.
`
`understand to be the broadest reasonable construction of these terms from the perspective of one
`
`of ordinary skill in the art.
`
`23.
`
`I have also been told that the obviousness inquiry is a question of law based on
`
`four factual predicates: (a) the scope and content of the prior art; (b) the differences between the
`
`prior art and the claims at issue; (c) the level of ordinary skill in the pertinent art; and (d)
`
`secondary considerations such as commercial success, long felt but unsolved needs, failure of
`
`others.
`
`24.
`
` I have also been informed that determining whether there are any material
`
`differences between the scope and content of the prior art and each asserted claim of the
`
`challenged patent requires consideration of the claimed invention as a whole to determine
`
`whether or not it would have been obvious in light of the prior art. If the prior art discloses all
`
`the limitations in separate references, consideration should be given to whether it would have
`
`been obvious to combine those references. I understand that a claim is not obvious merely
`
`because all of the features of that claim already existed in the prior art. Further, a person of
`
`ordinary skill in the art who is combining references should have a reasonable expectation of
`
`success.
`
`IV.
`
`SUMMARY OF OPINIONS
`
`25.
`
`The methods recited in independent claims 1, 6 and 9 include the steps of
`
`administering an increased dosage of glyceryl tri-[4-phenylbutyrate] (also known as “glycerol
`
`phenylbutyrate,” “HPN-100” or “GPB”) to a subject who has previously been administered an
`
`initial dose of glyceryl tri-[4-phenylbutyrate] when the subject’s plasma ammonia level is
`
`between half the upper limit of normal (“ULN”) and the upper limit of normal (see Ex. 1001 at
`
`9
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`24:13-25; 24:41-50; 24:59-25:2 (’966 patent)). Accordingly, these claims recite increasing the
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`dosage of glyceryl tri-[4-phenylbutyrate] when a subject’s plasma ammonia is in a normal range.
`
`The independent claims differ in that claims 6 and 9 specify that the “subject” is a “pediatric
`
`subject” and an “adult subject,” respectively and do not specify a numerical range for the ULN.
`
`
`
`26.
`
`Claims 2-5, 7-8, and 10-11 depend from claims 1, 6 or 9. Specifically, claims 2
`
`and 3 recite specific ranges for the upper limit of normal; claims 5, 8, and 11 specify that the
`
`glyceryl tri-[4-phenylbutyrate] is administered orally; and claims 4, 7 and 10 further recite
`
`repeating the steps of measuring a fasting plasma ammonia level, comparing it to the upper limit
`
`of normal, and administering an increased dosage of glyceryl tri-[4-phenylbutyrate] if the fasting
`
`plasma ammonia level is greater than half the upper limit of normal until the subject exhibits a
`
`fasting plasma ammonia level at or below half the ULN.
`
`27.
`
`The method recited by independent claim 12 includes administering an initial
`
`dose of glyceryl tri-[4-phenylbutyrate] based on body surface area of the patient, measuring the
`
`patient’s urinary PAGN and/or fasting plasma ammonia level, and administering a subsequent
`
`dosage of glyceryl tri-[4-phenylbutyrate] that is either the same as the initial dosage or increased,
`
`wherein said increased dosage is based on the patient’s urinary PAGN and/or fasting plasma
`
`ammonia level. Claim 13 depends from claim 12, and further recites repeating the steps above
`
`until the subject exhibits a fasting plasma ammonia level at or below half the upper limit of
`
`normal.
`
`28.
`
`As explained in detail below, the methods recited in independent claims 1, 6 and 9
`
`of the ’966 patent are not obvious over the prior art relied upon by Dr. Sondheimer. Specifically,
`
`in my opinion there is no teaching or suggestion in the prior art to practice the methods recited
`
`by independent claims 1, 6, and 9 and the claims dependent therefrom. No prior art reference
`
`10
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`discloses increasing the dosage of a nitrogen scavenging drug or even initiating dosing when a
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`patient has a normal plasma ammonia value. To the contrary, the prior art viewed normal plasma
`
`ammonia values as acceptable and indicative of an effective treatment, with acceptable plasma
`
`ammonia values often including those two to three times greater than the upper limit of normal.
`
`Moreover, one of ordinary skill would have had no reason to adjust the treatment regimen when
`
`a subject’s plasma ammonia levels were normal, especially given the unreliability of plasma
`
`ammonia levels.
`
`29.
`
`In addition to the failure of the prior art to teach increasing a dosage when plasma
`
`ammonia is in the normal range, discussed above, in my opinion there is also no teaching or
`
`suggestion in the prior art of targeting a plasma ammonia value at or below half the upper limit
`
`of normal. For this independent reason, I do not believe that the prior art disclosed or suggested
`
`the features of dependent claims 4, 7, 10 and 13.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`30.
`
` A person of ordinary skill in the art of the ’966 patent would have had the
`
`following qualifications: (a) an M.D. or equivalent degree; (b) at least three years of
`
`residency/fellowship training in Medical Genetics, including Biochemical Genetics, followed by
`
`certification in Clinical Genetics and Clinical or Medical Biochemical Genetics by the American
`
`Board of Medical Genetics and Genomics; and (c) at least five years of experience treating
`
`patients with nitrogen retention disorders, including urea cycle disorders.
`
`31.
`
`I disagree with Petitioner’s and Dr. Sondheimer’s definition that requires “a
`
`physician or scientist with a Ph.D. or M.D. degree and specialized training in the diagnosis or
`
`treatment of inherited metabolic disorders, such as UCD and other nitrogen retention disorders.”
`
`(Pet. at 20; Ex. 1002 at ¶ 47 (Sondheimer).) The ’966 patent claims are directed to, inter alia,
`
`11
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`methods of administering and adjusting the dosage of a nitrogen scavenging medication in
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`subjects being treated for urea cycle disorder. (Ex. 1001 at 24:10-26:17 (’966 patent).) A doctor
`
`or scientist trained only in diagnosing urea cycle disorders would not have an understanding of
`
`the various complicated factors involved in designing a treatment plan for a patient with a urea
`
`cycle disorder. Such a physician or scientist would not understand the state of the art with
`
`respect to the use of ammonia levels in treating urea cycle disorder patients. They, for example,
`
`would have a fundamental misunderstanding of the goal in treating a patient with a urea cycle
`
`disorder and the role of “normal” plasma ammonia levels in making treatment decisions.
`
`32.
`
`I also disagree with Petitioner’s and Dr. Sondheimer’s definition because it does
`
`not specify the amount of specialized training needed in the treatment or diagnosis of patients
`
`with nitrogen retention disorders, such as UCDs, to qualify as a POSA, nor require any of the
`
`relevant Board certifications. Instead, Petitioner and Dr. Sondheimer provide that “such a person
`
`may also have post-graduate training to fulfill the requirements of the American Board of
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`Medical Genetics and Genomics in Clinical Genetics, Clinical Biochemical Genetics, or Medical
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`Biochemical Genetics.” (Pet. at 20.) But the complex treatment of UCD or other nitrogen
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`disorders requires experienced personnel with specific expertise in metabolic disorders in order
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`to understand the various complicated factors involved in designing a treatment plan for a patient
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`with a urea cycle disorder. Accordingly, a person of ordinary skill would need at least three
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`years of residency/fellowship training in Medical Genetics, including Biochemical Genetics,
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`followed by dual certification in both Clinical Genetics and Clinical or Medical Biochemical
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`Genetics by the American Board of Medical Genetics and Genomics, and at least five years of
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`experience treating patients with nitrogen retention disorders. Dual certification in the above-
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`referenced specialties is required to ensure that the physician’s training imparts the fundamental
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`knowledge needed to care for the complex needs of UCD patients. Training in Clinical Genetics
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`U.S. Patent No. 9,326,966
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`requires exposure to inborn errors of metabolism as part of the curriculum, but such exposure is
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`typically basic and not designed to provide the trainee with the specialist-level knowledge
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`needed for treating and managing UCD patients. With further certification in Clinical or
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`Medical Biochemical Genetics, a physician obtains training in basic biochemistry and genetics,
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`the application of biochemical techniques to the management of genetic diseases, and the
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`etiology, pathogenesis, clinical manifestations, and management of human inherited biochemical
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`disorders such as UCD.
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`33.
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`Furthermore, a considerable amount of time in practice, such as at least 5 years, is
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`required to gain adequate experience in the longitudinal management of UCD patients due to the
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`rarity of UCD and the small number of patients that even a busy practice will follow. Less
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`qualified physicians would not understand the state of the art with respect to the use of ammonia
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`levels in treating urea cycle disorder patients. Those without this level of skill, for example,
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`would have a fundamental misunderstanding of the goal in treating a patient with a urea cycle
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`disorder and the role of “normal” plasma ammonia levels in making treatment decisions.
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`34.
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`I disagree that the definition of one of ordinary skill would include someone with
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`residency training only in general pediatrics or internal medicine, and an indefinite amount of
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`“specialized training” in nitrogen retention disorders such as UCD that falls short of the
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`requirements as laid out in my definition above. (See ¶ 30, supra.) Treatment of urea cycle
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`disorders requires specialized expertise and training that a general pediatrician would not
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`possess. For example, a general pediatric residency program may only include a one-hour
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`lecture on inborn errors of metabolism and a resident may never even see a patient with urea
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`cycle disorder. A general pediatrician therefore would not be responsible for prescribing
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`nitrogen scavenging medicine for the treatment of urea cycle disorders. Just as a pediatrician
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`Case No. IPR2017-01769
`U.S. Patent No. 9,326,966
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`would refer a patient in cardiac failure to a cardiologist, a patient with thyroid issues to an
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`endocrinologist, and a patient with kidney problems to a nephrologist, a pediatrician would refer
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`a patient with urea cycle disorder to a biochemical geneticist. Because of the rarity of these
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`disorders (only approximately 113 new patients per year) and high mortality rate, a general
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`pediatrician would not have any exposure to these types of patients. (Ex. 2035 at 180 (Summar
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`2013); Ex. 2019 at 1-2 (Häberle); Ex. 2036 at 1423 (only 35% survival of patients presenting
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`with hyperammonemia within first 30 days of life) (Summar 2008).) Even experienced Clinical
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`Geneticists without certification in either Clinical or Medical Biochemical Genetics refer UCD
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`patients to physicians with further subspecialist biochemical qualifications for management. One
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`publication notes that even experienced metabolic specialists may only ever manage fewer than
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`50 urea cycle disorder patients. (Ex. 2037 at S86 (Wilcken).) The prior art consistently
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`emphasizes the importance of referring urea cycle disorder patients to specialized care centers so
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`they can receive proper care, thus ensuring their growth and survival. (Ex. 2017 at S66, S67,
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`S69 (discussing the importance of specialized metabolic centers and the increase in survival of
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`UCD patients when treated in specialized metabolic centers) (Enns 2010); Ex. 2034 at S33
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`(Summar 2001); Ex. 2037 at S87 (stressing the need to transport patients to a dedicated UCD
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`facility) (Wilcken).)
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`35.
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`Petitioner’s definition is therefore overly broad and incorrect as it does not require
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`any experience actually treating patients with nitrogen disorders such as urea cycle disorder, and
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`thus does not ensure that a person who meets its definition possesses the expertise necessary to
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`navigate the complex treatment of patients with UCDs or other nitrogen retention disorders.
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`VI.
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`TECHNOLOGY BACKGROUND
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`Case No. IPR2017-01769
`U.S. Patent No. 9,326,966
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`36.
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` Humans are unable to synthesize certain of the amino acids needed in the body,
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`either at all or in sufficient levels for growth and maintenance. (Ex. 2014 at 4-6 (Wu).)
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`Accordingly, dietary protein is an essential component of the human diet because it provides
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`these essential amino acids. (Ex.