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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CATALENT PHARMA SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`PATHEON SOFTGELS INC.,
`Patent Owner.
`
`
`Case IPR2018-00422
`Patent 9,693,979
`
`
`DECLARATION OF PETER DRAPER
`REGARDING U.S. PATENT NO. 9,693,979
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`IPR2018-00422 -- Ex. 1001
`Catalent Pharma Solutions, Inc., Petitioner
`
`

`

`Declaration of Peter Draper
`Patent No. 9,693,979
`
`I, Peter Draper, do hereby declare and state that all statements made herein
`
`of my own knowledge are true, and that all statements made on information and
`
`belief are believed to be true; and further that these statements were made with
`
`the knowledge that willful false statements and the like so made are punishable
`
`by fine or imprisonment, or both, under Section 1001 of Title 18 of the United
`
`States Code.
`
`Dated: January 12, 2018
`
`Peter Draper
`
`IPR2018-00422 -— EX. 1001
`
`Catalent Pharma Solutions, Inc., Petitioner
`
`

`

`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Background and Education ................................................................... 1
`
`Professional Qualifications ................................................................... 1
`
`Assignment ............................................................................................ 4
`
`Compensation ........................................................................................ 4
`
`Information Considered ......................................................................... 5
`
`II.
`
`PATENTABILITY .......................................................................................... 6
`
`A. My Understanding of the Legal Standards............................................ 6
`
`B.
`
`The Person of Ordinary Skill in the Art ................................................ 8
`
`III. DISCUSSION OF THE BACKGROUND TECHNOLOGY .......................10
`
`IV. THE ’979 PATENT .......................................................................................18
`
`A. Background ........................................................................................18
`
`B.
`
`C.
`
`D.
`
`E.
`
`Prosecution Summary ........................................................................19
`
`Calculations Relating to Claimed 5% Lactic Acid .........................28
`
`Issued Claims .....................................................................................31
`
`Broadest Reasonable Interpretation of Claim Terms ......................33
`
`1.
`
`2.
`
`“about 5%” ...............................................................................33
`
`“liquid matrix” ..........................................................................37
`
`V. DESCRIPTION AND ANALYSIS OF THE PRIOR ART ..........................38
`
`A. U.S. Patent No. 6,383,471 to Chen .....................................................38
`
`B.
`
`C.
`
`U.S. Publication No. 20040157928 to Kim ........................................60
`
`U.S. Publication No. 20040224020 to Schoenhard ............................76
`
`VI. LACK OF EVIDENCE OF SECONDARY CONSIDERATIONS ..............92
`
`VII. CONCLUSION ..............................................................................................98
`
`
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`IPR2018-00422 -- Ex. 1001
`Catalent Pharma Solutions, Inc., Petitioner
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`

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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Education
`
`1.
`
`I am a scientist with extensive knowledge and experience in the field of
`
`pharmaceutical formulations and, in particular, with gelatin capsule formulations. I
`
`have been working in this field since 1991.
`
`2.
`
`I became a Graduate of the Royal Society of Chemistry (UK) in 1972, and in
`
`1994 received a Master of Science Degree in Pharmaceutical Sciences from the
`
`University of Strathclyde Glasgow (UK).
`
`B.
`
`Professional Qualifications
`
`3.
`
`Reckitt and Colman UK (Reckitt Benckiser): I held a number of positions at
`
`Reckitt and Colman Pharmaceuticals from 1964 to 1990. At the time of my
`
`employment, the company was engaged in the research, development and
`
`manufacture of new pharmaceutical active ingredients and pharmaceutical
`
`products based on drug delivery technologies. From 1964 to 1972, I was an
`
`Undergraduate Laboratory Technician and assisted in supporting the analyses of
`
`pharmaceutical materials and finished products. From 1974 to 1988, I was an
`
`Analytical Chemist working on the development of analytical methods associated
`
`with the development and stability evaluation of pharmaceutical active ingredients,
`
`a wide range of pharmaceutical dosage forms, and associated primary packaging.
`
`During that time, I also managed the analytical functions associated with the
`
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`IPR2018-00422 -- Ex. 1001
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`development of new pharmaceutical products. From 1988 to 1990, I was a
`
`Technical Development Manager evaluating new products from within the
`
`company and external contract suppliers, and coordinating product developments
`
`between the Technical and Market Development functions.
`
`4.
`
`RP Scherer North America: I worked for RP Scherer from 1991 to 2005. I
`
`originally was a Technical Director at RP Scherer (UK) and then transferred to RP
`
`Scherer North America. I was responsible for coordinating the development of
`
`new soft gelatin capsules and management of a number of major projects
`
`associated with the development and manufacture of soft gelatin capsule dosage
`
`forms and associated processes. I gained in‐depth experience of soft gelatin
`
`capsule dosage form design, development and manufacture, particularly complex
`
`formulations for the optimum delivery of active pharmaceutical ingredients. I also
`
`provided relevant technical support to the Sales and Marketing functions in client
`
`meetings and presentations. Some of the major projects I worked on included
`
`establishing and managing a specialist suite for the development and manufacture
`
`of soft gelatin capsules containing cytotoxic pharmaceutical active ingredients, and
`
`closed vessel processing of capsule fill materials (such as the “liquid matrix”
`
`referred to in the claims of the ’979 Patent). I also was a project leader for the
`
`identification and development of soft gelatin capsules based on non‐gelatin
`
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`hydrocolloids.
`
`5.
`
`Gel‐Cell Capsules: I was the General Manager of the Gel‐Cell Capsules
`
`company from 2005 to 2006 concerned with the development and contract
`
`manufacture of consumer pharmaceutical and nutritional soft gelatin capsule
`
`products in Canada.
`
`6.
`
`Accucaps Industries Limited: I held a few positions at Accucaps Industries
`
`from 2006 to 2017. I was the Senior Director of Development from 2006 to 2009
`
`responsible for establishing, developing and managing the technical/scientific team
`
`and associated project management processes for the design and development of
`
`soft gelatin capsules for clients. I served as the Vice President of Product
`
`Development from 2010 to 2015. As a member of the Accucaps Industries
`
`Executive, I was responsible for product development and technical support of
`
`Sales and Marketing. I also initiated and progressed the Accucaps portfolio of new
`
`soft gelatin capsule technologies, associated products and IP developments. I
`
`served as the Vice President of New Technologies and IP from 2015 to 2017 where
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`I evaluated new soft gelatin capsule related technologies and dosage form designs,
`
`and progressed a portfolio of patent applications.
`
`7.
`
`Catalent Ontario Limited: I am currently the Vice President of Product
`
`Innovation (R&D) at Catalent Ontario Limited, a subsidiary of Catalent Pharma
`
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`Solutions, Inc. I provide technical support as necessary for the progression of a
`
`portfolio of patent applications initiated by Accucaps Industries, and I am a member
`
`of the Catalent Intellectual Property Review Board concerned with soft gelatin
`
`capsule technology.
`
`8. My curriculum vitae or “CV” (Ex. 1002) fairly and accurately reflects my
`
`education, background, and experience as of the date of this Declaration.
`
`C. Assignment
`
`9.
`
`I have been asked by Catalent’s counsel to provide my technical expertise
`
`regarding pharmaceutical formulations, in particular gelatin capsule formulations,
`
`and render opinions regarding the patentability of all of the claims of U.S. Patent
`
`No. 9,693,979 (“the ’979 Patent,” Ex. 1003).
`
`D. Compensation
`
`10.
`
`I am not being compensated specifically for my work in connection with this
`
`matter, such as my study and review of the ’979 Patent, related prior art and other
`
`materials. I am being reimbursed for reasonable and customary expenses associated
`
`with my work in this proceeding. My compensation and employment with Catalent
`
`is not contingent on the outcome of the petition for inter partes review, this
`
`proceeding if trial is instituted, or the specifics of my testimony.
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
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`E.
`
`Information Considered
`
`11. My opinions are based on my pharmaceutical education and over 40 years of
`
`technical experience in the field of pharmaceutical formulations, as well as my
`
`investigation and study of the relevant materials.
`
`12.
`
`In forming my opinions, I have reviewed the prosecution history of the ’979
`
`Patent (Ex. 1008) including the provisional application (Ex. 1004), the utility
`
`application that was abandoned after a failed appeal (Ex. 1005), the continuation
`
`application that resulted in the ’978 Patent (Ex. 1006), the European counterpart to
`
`the ’978 Patent (Ex. 1007), and various documents submitted by the Patentee
`
`related to the alleged invention claimed in the ’979 Patent. In particular, I have
`
`reviewed comparative data regarding citric acid and lactic acid (Ex. 1007A, pp.
`
`406-413) that was submitted during prosecution of the European patent, EP
`
`1863458, which corresponds to the ’978 Patent. I also have reviewed the
`
`Declaration of Bob Kalkreuter (Ex. 1006, pp.1-6) that was submitted during
`
`prosecution of the ’978 Patent.
`
`13.
`
`In forming my opinions, I have considered U.S. Patent No. 6,383,471 to
`
`Chen (Ex. 1009), U.S. Patent Application Publication No. 20040157928 to Kim
`
`(Ex. 1010), and U.S. Patent Application Publication No. 20040224020 to
`
`Schoenhard (Ex. 1011).
`
`14.
`
`I have also considered the materials referred to in this Declaration and
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`IPR2018-00422 -- Ex. 1001
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`identified as Exs. 1012 through 1029.
`
`15.
`
`I may rely upon these materials and/or additional materials to rebut
`
`arguments raised by the Patent Owner. Further, I may also consider additional
`
`documents and information in forming any necessary opinions, including
`
`documents that I may not yet have reviewed and documents that have not yet been
`
`provided to me.
`
`16. My analysis of the materials related to this proceeding is ongoing, and I will
`
`continue to review any new material as it is provided. This Declaration represents
`
`only those opinions I have formed as of the date of this Declaration.
`
`17. The opinions expressed in this Declaration are not exhaustive of my
`
`opinions on the patentability of the claims of the ’979 Patent. Therefore, the fact
`
`that I do not address a particular point should not be understood to indicate any
`
`opinion on my part that any claim otherwise complies with the patentability
`
`requirements.
`
`II.
`
`PATENTABILITY
`
`A. My Understanding of the Legal Standards
`
`18.
`
`In expressing my opinions and considering the subject matter of the claims of
`
`the ’979 Patent, I am relying upon certain basic legal principles that counsel have
`
`provided.
`
`19.
`
`I have been informed and understand that claims are construed from the
`
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`IPR2018-00422 -- Ex. 1001
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`perspective of a person of ordinary skill in the art at the time of the claimed
`
`invention, and that, during inter partes review, claims are to be given their broadest
`
`reasonable interpretation consistent with the specification, prosecution history, and
`
`knowledge of a person of ordinary skill in the art.
`
`20.
`
`I have also been informed and understand that the subject matter of a patent
`
`claim is anticipated by a single item of prior art if the single item of prior art
`
`includes, expressly or inherently, every element of a claim. A limitation is inherent
`
`in the prior art reference if it is necessarily present in the anticipating reference,
`
`and not merely probably or possibly present.
`
`21.
`
`I have also been informed and understand that the subject matter of a patent
`
`claim is obvious if the differences between the subject matter of the claim and the
`
`prior art are such that the subject matter as a whole would have been obvious at the
`
`time the invention was made to a person of ordinary skill in the art to which the
`
`subject matter pertains. I have also been informed that the framework for
`
`determining obviousness involves considering the following factors: (i) the scope
`
`and content of the prior art; (ii) the differences between the prior art and the claimed
`
`subject matter; (iii) the level of ordinary skill in the art; and (iv) any objective
`
`indicia of non-obviousness. I understand that the claimed subject matter would
`
`have been obvious to a person of ordinary skill in the art if, for example, it resulted
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`from the combination of known elements according to known methods to yield
`
`predictable results, the simple substitution of one known element for another to
`
`obtain predictable results, using a known technique to improve similar devices in
`
`the same way, applying a known technique to a known device ready for
`
`improvement to yield predictable results, or choosing from a finite number of
`
`identified predictable solutions with a reasonable expectation of success. I have
`
`also been informed that the analysis of obviousness may include recourse to logic,
`
`judgment, and common sense available to the person of ordinary skill in the art that
`
`does not necessarily require explication in any reference. I also understand that
`
`routine experimentation in order to optimize a result-effective variable would also
`
`be obvious to a person of ordinary skill.
`
`22.
`
`In addition, I understand that the obviousness inquiry should not be
`
`performed with the benefit of hindsight, but should be considered through the eyes
`
`of a person of ordinary skill in the relevant art at the time of the claimed invention,
`
`and that is what I have done in my analysis.
`
`23.
`
`I understand that a claimed invention that is anticipated by or rendered
`
`obvious in light of prior art is not patentable.
`
`B.
`
`The Person of Ordinary Skill in the Art
`
`24.
`
`I understand that the person of ordinary skill in the art is considered to have
`
`the normal skills and knowledge of a person in a certain technical field, as of the
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`time of the invention at issue. I understand that factors that may be considered in
`
`determining the level of ordinary skill in the art include: (i) the education level of
`
`the inventor; (ii) the types of problems encountered in the art; (iii) the prior art
`
`solutions to those problems; (iv) rapidity with which innovations are made; (v) the
`
`sophistication of the technology; and (vi) the education level of active workers in
`
`the field. I also understand that “the person of ordinary skill” is a hypothetical
`
`person who is presumed to be aware of the universe of available prior art.
`
`25. Based on my review of the ’979 Patent, my graduate degree, and my 40+
`
`years of relevant work experience, I believe the field of invention for the ’979
`
`Patent is gelatin capsule formulations. The preamble for all independent claims in
`
`the ’979 Patent relates to gelatin capsule formulations.
`
`26.
`
`I believe the level of ordinary skill in the art as of the effective filing date of
`
`the ’979 Patent is reflected in the disclosure of the prior art references discussed
`
`below. It is my opinion that the person of ordinary skill in this art has a bachelor’s
`
`degree or
`
`the equivalent, and potentially some advanced schooling,
`
`in
`
`pharmaceutical sciences, chemistry, or a related discipline, and a minimum of 5
`
`years of additional training and experience in the field of pharmaceutical
`
`formulations, particularly as they relate to gelatin capsules.
`
`27.
`
`I believe that I am reasonably an expert in pharmaceutical formulations, and,
`
`9
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`specifically, gelatin capsule formulations.
`
`28. The below analysis of the prior art references uses the perspective of a person
`
`of ordinary skill in the field of pharmaceutical formulations, specifically someone
`
`with a bachelor’s degree in chemistry, pharmacy or related life sciences with
`
`knowledge of pharmaceutical formulations and approximately five years of relevant
`
`industry experience with gelatin capsule formulations or the equivalent thereof. In
`
`considering the patentability of the ’979 Patent claims and describing my opinions
`
`below, I have applied my understanding of the legal standards and used the
`
`perspective of a person of ordinary skill in the art as described above at the time of
`
`the earliest possible filing date of the subject matter claimed in the ’979 Patent,
`
`which I understand is March 8, 2005.
`
`III. DISCUSSION OF THE BACKGROUND TECHNOLOGY
`
`29. Naproxen is a non-steroidal anti-inflammatory drug (NSAID) having the
`
`formula:
`
`Due to its acidic nature and poor solubility, it is frequently administered in the form
`
`of a pharmaceutically-acceptable salt such as naproxen salts like naproxen sodium.
`
`
`
`10
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`Catalent Pharma Solutions, Inc., Petitioner
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
`
`A typical dosage for naproxen and/or naproxen sodium is around 200 or 250 mg for
`
`naproxen or 220 mg for naproxen sodium (Ex. 1021, Banner Pharmacaps FDA
`
`Petition referring to 220mg naproxen tablets; Ex. 1010, Kim Tables 4a, 4b, 5a, 5b
`
`referring to 250mg). Standard sizes for soft gelatin capsules used to deliver this
`
`quantity of drug typically encapsulate around 0.8 to 1.2 mL of a “liquid matrix,”
`
`which includes the drug, solvents, and excipients. A table showing conventional
`
`capsule sizes as known to a person of ordinary skill in the art is attached as
`
`Appendix A.
`
`30. Soft gelatin capsules (“softgels”) encapsulating pharmaceuticals in liquid
`
`form have been in existence since the early 1900s, and in 1933, Robert Scherer
`
`invented the rotary die encapsulation process, which is still in use today (Ex. 1022,
`
`https://en.wikipedia.org/wiki/Robert_Pauli_Scherer; Ex. 1011, paragraph [0028]).
`
`31. Prior to the ’979 Patent filing, certain acidic drugs, like naproxen, were well-
`
`known to be difficult to dissolve in their acid form. (Ex.1010, [0040]). Moreover,
`
`it was known that the pH of the softgel fill liquid (“liquid matrix”) should be
`
`controlled, e.g., maintained between 2.5 and 7.5 so as not to hydrolyze or tan the
`
`gelatin shell. (Ex.1003, Column 1, lines 37-39; Ex.1014). As described in detail
`
`below, common approaches for addressing these issues included using appropriate
`
`11
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`IPR2018-00422 -- Ex. 1001
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`

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`solvent systems and/or partial ionization to form compositions which include both
`
`Declaration of Peter Draper
`Patent No. 9,693,979
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`the acid and the conjugate base.
`
`32. Softgel formulations including a mixture of polyethylene glycol and
`
`polyvinylpyrrolidone and, among other possible actives, naproxen and its salts have
`
`been known since at least 1992. U.S. Patent No. 5,141,961 to Coapman or
`
`“Coapman” (Ex. 1012) issued on August 25, 1992, and discloses that for softgel
`
`formulations the most preferred polyethylene glycols have a molecular weight
`
`range from about 600 to about 1000 (Column 4, lines 33-55), the polyethylene
`
`glycols are preferably present in about 20 to about 70% by weight of the “liquid
`
`matrix” (Column 4, lines 62-66), and polyvinylpyrrolidone can be present
`
`(preferably at around 1-10% by weight) (Column 5, lines 59-64).
`
`33. U.S. Patent No. 5,641,512 to Cimileuca or “Cimileuca” (Ex. 1013) issued on
`
`December 27, 1994, and discloses similar softgel formulations to those disclosed in
`
`Coapman. For example, Cimileuca states: “Particularly preferred solvents include
`
`polyethylene glycols, polyvinylpyrrolidone and propylene glycol” (Column 3, lines
`
`41-46), and that “[p]referred polyethylene glycols have a molecular weight range
`
`from about 300 to about 1000” (Column 3, lines 53-64). Further, Cimileuca
`
`discloses that suitable solvents include polyethylene glycol, propylene glycol and
`
`polyvinylpyrrolidone (Column 4, lines 50-57).
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`34. Accordingly, such solvent systems were well known for use in softgel
`
`formulations that encapsulated naproxen and naproxen sodium well before the
`
`Declaration of Peter Draper
`Patent No. 9,693,979
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`March 8, 2005 priority date for the ’979 Patent.
`
`35. There were and are certain known limitations to the use of certain liquids as
`
`fill vehicles for softgels. For example, U.S. Patent No. 5,360,615 to Yu or “Yu”
`
`(Ex. 1014) issued on November 1, 1994, and teaches that the pH of the fill liquid
`
`(“liquid matrix” in the ’979 Patent claims) should not be below 2.5 or above 7.5
`
`(Column 1, lines 55-64). At pH values below 2.5, the gelatin is hydrolyzed,
`
`causing leaking, whereas at pH values greater than 7.5, the gelatin is tanned,
`
`resulting in decreased solubility of the gelatin shell. Prior to the filing of the ’979
`
`Patent, it was known to use a buffer to adjust the pH of a naproxen sodium solution
`
`fill liquid if it was outside of this range (Exs. 1009-1011).
`
`36. Certain acidic drugs, like naproxen, are difficult to dissolve when they are in
`
`their acid form. Common approaches for addressing solubility issues include using
`
`appropriate solvent systems, and forming compositions which include both the acid
`
`and the conjugate base of active agents comprising carboxylic acid groups. This
`
`was well known before the March 8, 2005 priority date for the ’979 Patent.
`
`37. U.S. Patent Application Publication No. 20040157928 to Kim or “Kim” (Ex.
`
`1010) published on August 12, 2004, and discloses a solvent system for “hardly
`
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`Declaration of Peter Draper
`Patent No. 9,693,979
`
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`soluble” acidic drugs like naproxen, which improves the bioavailability by partially
`
`ionizing the drug so that the drug exists in two forms (i.e., a free acid and a cationic
`
`salt) and uses a solvent system that helps to dissolve the mixture of the free acid and
`
`cationic salt (Abstract). The system which partially ionizes the drug may be
`
`referred to as a “cation acceptance” (see [0015]).
`
`38. The solvent system in Kim includes polyethylene glycol, water and a
`
`surfactant to improve the dissolution rate ([0015]). In para [0016], Kim discloses
`
`that preferred solvent systems include 10 to 80% by weight of polyethylene glycol,
`
`which can be PEG 600 (see [0017]), 4 to 9% by weight of water, 0.1 to 2 mole
`
`equivalent of a “cation acceptance” with respect to the hardly soluble acidic drug,
`
`and can also include propylene glycol, glycerin, or polyvinylpyrrolidone (see
`
`[0071]). Kim also discloses that sodium citrate is a base that can be used for
`
`“cation acceptance” (see, for example, Claim 4 and Table 5d).
`
`39. An ordinarily skilled artisan at the time of the filing of the ’979 Patent would
`
`understand that citric acid and lactic acid are functional equivalents or substitutable
`
`in naproxen softgel formulations. This is evidenced by, for example, the fact that
`
`the acid strength, i.e. pKa, of citric and lactic acids are substantially equivalent (Ex.
`
`1023, R.M.C. Dawson et al., Data for Biochemical Research (Oxford: Clarendon
`
`Press 1959)). That is the ordinarily skilled artisan appreciated at the time of the
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`Declaration of Peter Draper
`Patent No. 9,693,979
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`’979 filing that changing from citric acid to lactic acid (or sodium citrate to sodium
`
`lactate) is a simple substitution of one known carboxylic acid for another. Further
`
`confirmation of the substitutability of citric and lactic acid is that the ’979 Patent
`
`lists both citric and lactic acid as preferred ionization agents and the working
`
`examples use both citric and lactic acids without any described difference in effect
`
`(Ex. 1003, Examples 2, 5, 7-12). That citric acid and lactic acid are functional
`
`equivalents in naproxen softgel formulations is confirmed by data from the
`
`prosecution of the European patent corresponding to the ’979 Patent, EP 1863458,
`
`showing that citric acid and lactic acid were substantially equivalent in their ability
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`to form gelatin capsule formulations with naproxen sodium as the active agent.
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`(Ex. 1007A, 406-412).
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`40. Since citric acid and lactic acid are functional equivalents for purposes of
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`providing a mixture of naproxen and naproxen sodium, the disclosure of sodium
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`citrate is equivalent to a disclosure of sodium lactate.
`
`41. Further, it is well known that combining naproxen sodium with lactic acid is
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`fundamentally the same as combining naproxen with sodium lactate. This is
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`because naproxen sodium is a base and reacts with lactic acid to form a mixture
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`that, at equilibrium, will include naproxen sodium, naproxen, lactic acid, and
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`sodium lactate. Similarly, naproxen is an acid, and reacts with sodium lactate to
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`Declaration of Peter Draper
`Patent No. 9,693,979
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`form a mixture that, at equilibrium, will include naproxen sodium, naproxen, lactic
`
`acid, and sodium lactate. For this reason it does not matter whether one starts with
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`naproxen sodium and adds lactic acid, or starts with naproxen and adds sodium
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`lactate, the result will always be a mixture of naproxen sodium, naproxen, lactic
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`acid, and sodium lactate. This is shown below:
`
`
`
`42. During prosecution of U.S. Patent Application Serial No. 11/367,238, an
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`application to which the ’979 Patent claims priority, the Patentee submitted the
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`Declaration of Bob Kalkreuter dated December 4, 2015 (Ex. 1006, pp.1-6). In that
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`declaration, Mr. Kalkreuter evaluated the composition disclosed in Example 17 of
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`U.S. Patent No. 6,383,515 to Sawyer (Ex. 1015), which included naproxen sodium,
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`potassium hydroxide, and sodium propionate. His opinion, relied on by the
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`Patentee, was based on a calculation of the equilibrium concentration of the various
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`components. Accordingly, the Patentee acknowledged that what happens at
`
`equilibrium should be considered. At equilibrium, one will have the identical ions
`
`and non-ionic species present, in the identical concentrations, whether one starts
`
`with naproxen and adds sodium lactate or starts with naproxen sodium and adds
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`Declaration of Peter Draper
`Patent No. 9,693,979
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`lactic acid.
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`43. Kim is not the only prior art reference disclosing softgels which encapsulate
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`a combination of naproxen and its conjugate base. Yu (Ex. 1014, Claims 1 and 8)
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`also discloses softgel formulations for acidic pharmaceutical agents, in which the
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`pharmaceutical agent is partially ionized by a base, and dissolved in a polyethylene
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`glycol-based solvent system. The pharmaceutical agent shows enhanced solubility
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`in the partially ionized form, and the glycerin, propylene glycol and/or
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`polyvinylpyrrolidone further enhances the solubility of the pharmaceutical agent in
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`the polyethylene glycol base (Abstract). Naproxen is one example of an acidic
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`pharmaceutical agent disclosed in Yu (Claim 8).
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`44. U.S. Pat. No. 6,383,471 to Chen or “Chen” (Ex. 1009) issued on May 7,
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`2002, and discloses softgel formulations which can encapsulate naproxen (Claim
`
`7), where a carrier includes a pharmaceutically-acceptable base capable of ionizing
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`the carboxylic acid in naproxen (Claim 2). The base can be the salt of a
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`pharmaceutically-acceptable cation, such as sodium, and lactic acid (Claim 8).
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`The mole ratio of the base to naproxen can be 0.5/1 (see, for example, Column 12,
`
`lines 30-35).
`
`45. U.S. Publication No. 20040224020 to Schoenhard or “Schoenhard” (Ex.
`
`1011) published November 11, 2004. Schoenhard discloses oral dosage forms
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`Declaration of Peter Draper
`Patent No. 9,693,979
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`with active agents in controlled release cores and in immediate release gelatin
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`capsule coats (Abstract). Naproxen sodium is disclosed as an active agent
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`([0105]), and lactic acid is disclosed as a suitable osmotic agent, which enhances
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`the absorption of the active agent by creating a local pH and/or chemical potential
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`environment ([0086]).
`
`46. Prior to the filing of the ’979 Patent, it was well known that naproxen
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`sodium is a salt of a weak acid and a strong base, and naproxen sodium solutions
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`have a pH greater than 7.5. It was also well known in the art that soft gelatin
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`capsule shells are incompatible with strongly basic or highly alkaline solutions (Yu
`
`(Ex. 1014), Column 1, lines 55-61), and that the pH of naproxen sodium solutions
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`is outside the range suitable for use in gelatin capsules. It further was well known
`
`in the art to partially neutralize basic active agents such as naproxen sodium with
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`acids such as citric and lactic acid, or acidic active agents such as naproxen with
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`salts of acids such as citric and lactic acid (i.e., sodium citrate, sodium lactate,
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`sodium acetate, and the like) (Chen (Ex. 1009), Claim 4; Column 4, lines 40-47;
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`Column 11, lines 1-51; and Kim (Ex. 1010), Claims 1 and 4).
`
`IV. THE ’979 PATENT
`
`A. Background
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`47. The application for the ’979 Patent was filed on May 20, 2016, issued on
`
`July 4, 2017, is a divisional of U.S. Application Ser. No. 14/977,808 filed
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`Declaration of Peter Draper
`Patent No. 9,693,979
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`December 22, 2015, which is a continuation of U.S. Application Ser. No.
`
`11/367,238 filed March 3, 2006, and claims priority to U.S. Provisional
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`Application Ser. No. 60/659,679 filed on March 8, 2005. The original assignee
`
`listed on the face of the patent is Banner Life Sciences LLC. I understand that
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`this patent has been assigned to Patheon Softgels Inc.
`
`48. The specification of the ’979 Patent discloses a wide variety of drugs which
`
`can be encapsulated (which include those with acidic or basic functional groups), a
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`wide variety of “deionizing agents” (i.e., acids to deionize drugs with basic groups
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`and bases to deionize drugs with acidic groups), and excipients (see “Detailed
`
`Description,” Section I. Composition, Subsection A. Fill Materials, 1. Drugs to be
`
`Formulated). However, the claims of the ’979 Patent are focused solely on softgel
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`formulations comprising naproxen salts, lactic acid, and polyethylene glycol.
`
`B.
`
`Prosecution Summary
`
`49. Early on during prosecution of the ’979 Patent, Patentee originally
`
`claimed