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Paper No. ______ Filed: April 23, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________________
COALITION FOR AFFORDABLE DRUGS VI LLC
PETITIONER
V.
CELGENE CORPORATION
PATENT OWNER
___________________
CASE NO.: UNASSIGNED PATENT NO. 6,315,720
FILED: OCTOBER 23, 2000 ISSUED: NOVEMBER 13, 2001
INVENTORS: BRUCE A. WILLIAMS, JOSEPH K. KAMINSKI
TITLE: METHODS FOR DELIVERING A DRUG TO A PATIENT WHILE AVOIDING
THE OCCURRENCE OF AN ADVERSE SIDE EFFECT KNOWN
OR SUSPECTED OF BEING CAUSED BY THE DRUG ___________________
PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 6,315,720
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Patent No. 6,315,720
TABLE OF CONTENTS
I.
INTRODUCTION...................................................................................................
1
II. GROUNDS FOR STANDING (37 C.F.R. 42.104(a))
..................................... 1
III. MANDATORY NOTICES (37 C.F.R. 42.8)
..................................................... 1
A. Real Parties-in-Interest (37 C.F.R. 42.8(b)(1))
.................................................... 1
B. Related Judicial and Administrative Matters (37 C.F.R.
42.8(b)(2)) ................. 2
C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) and Service
Information (37 C.F.R. 42.8(b)(4))
.......................................................................
3
IV. PAYMENT OF FEES (37 C.F.R. 42.15(a) and 42.103)
................................ 3
V. IDENTIFICATION OF CHALLENGE
............................................................. 3
A. Overview of U.S. Patent No. 6,315,720
.................................................................
3
1. The 720 Patent Specification
.............................................................................
4
2. The 720 Claims
....................................................................................................
5
3. The 720 Prosecution History
.............................................................................
6
B. Claim Construction of Challenged Claims
............................................................. 9
1. Consulted
.........................................................................................................
10
2. Teratogenic effect
...........................................................................................
10
3. Adverse side effect
.........................................................................................
11
C. Statement of Precise Relief Requested for Each Claim
Challenged ................. 11
1. Claims for Which Review is Requested
........................................................... 11
2. Statutory Grounds of Challenge
.......................................................................
11
D. Overview of the State of the Art and Motivation to Combine
......................... 11
1. Summary of the Petitions Prior Art References
............................................ 14
E. Level of Ordinary Skill in the Art
..........................................................................
17
VI. DETAILED EXPLANATION OF THE CHALLENGE
.............................. 17
A. Ground 1: Claims 132 of U.S. Patent No. 6,315,720 are obvious
under 35 U.S.C. 103(a) over Mitchell in view of
i
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Patent No. 6,315,720
Dishman and in further view of Cunningham and the knowledge of
one of ordinary skill in the art.
..........................................................................
17
1. Claim 1 is obvious over Mitchell in view of Dishman and in
further view of Cunningham.
..............................................................................
17
2. Dependent Claims 26 are obvious over the prior art of Ground
1, and more specifically over Mitchell in view of Dishman and in
further view of the knowledge of one of ordinary skill in the art.
.....................................................................................
25
3. Dependent Claims 710 are obvious over the prior art of Ground
1, and more specifically over Mitchell in view of Dishman and in
further view of the knowledge of one of ordinary skill in the art.
.....................................................................................
29
4. Dependent Claims 1114 and 2025 are obvious over the prior art
of Ground 1, and more specifically over Mitchell in view of the
knowledge of one of ordinary skill in the art.
............................ 31
5. Dependent Claim 15 is obvious over the prior art of Ground 1,
and more specifically over Mitchell in view of Dishman and in
further view of the knowledge of one of ordinary skill in the art.
............... 35
6. Dependent Claims 1617 are obvious over the prior art of
Ground 1, and more specifically over Mitchell in view of Dishman
and in further view of the knowledge of one of ordinary skill in
the art.
.....................................................................................
37
7. Dependent Claims 1819 and 2627 are obvious over the prior art
of Ground 1, and more specifically over Mitchell in view of Dishman
and in further view of the knowledge of one of ordinary skill in
the art.
.................................................................................
38
8. The added limitations of independent Claim 28 and dependent
Claims 2932 are obvious over Mitchell in view of Dishman and in
further view of Cunningham and knowledge of one of ordinary skill
in the art.
.....................................................................................................
41
9. Claim chart for Ground 1 showing exemplary citations in
Mitchell, Dishman, and Cunningham.
...................................................................
46
VII. CONCLUSION
......................................................................................................
60
ii
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Patent No. 6,315,720
TABLE OF AUTHORITIES
Cases Abbott Labs v. Andrx Pharms., Inc.,
452 F.3d 1331 (Fed. Cir. 2006)
.......................................................................................
24 Bayer Schering Pharma AG v. Barr Labs., Inc.,
575 F.3d 1341 (Fed. Cir. 2009)
.......................................................................................
23 Dow Chem. Co. v. Sumitomo Chem. Co.,
257 F.3d 1364 (Fed. Cir. 2001)
.......................................................................................
18 Dystar Textilfarben GmbH v. C.H. Patrick Co.,
464 F.3d 1356 (Fed. Cir. 2006)
.......................................................................................
25 In re Glatt Air Techniques, Inc.,
630 F.3d 1026 (Fed. Cir. 2011)
.......................................................................................
18 In re Icon Health & Fitness, Inc.,
496 F.3d 1374 (Fed. Cir. 2007)
.......................................................................................
19 In re Kahn,
441 F.3d 977 (Fed. Cir. 2006)
.........................................................................................
43 In re Venner,
262 F.2d 91 (C.C.P.A. 1958)
...........................................................................................
38 KSR Intl Co. v. Teleflex Inc.,
550 U.S. 398 (2007)
.......................................................................................
23, 24, 40, 41 Pacing Techs., LLC v. Garmin Intl, Inc.,
778 F.3d 1021 (Fed. Cir. 2015)
.......................................................................................
10 Par Pharm., Inc. v. TWi Pharms., Inc.,
773 F.3d 1186 (Fed. Cir. 2014)
...........................................................................
20, 22, 44 Pentec, Inc. v. Graphic Controls Corp.,
776 F.2d 309 (Fed. Cir. 1985)
......................................................................
18, 28, 33, 42 Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348 (Fed. Cir. 2007)
.......................................................................................
21 Rogers v. Desa Intl, Inc.,
198 Fed. Appx. 918 (Fed. Cir. 2006)
.............................................................................
21 Sciele Pharma, Inc. v. Lupin Ltd.,
684 F.3d 1253 (Fed. Cir. 2012)
.................................................................................
34, 45 Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc.,
774 F.3d 968 (Fed. Cir. 2014)
...................................................................................
21, 30
iii
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Patent No. 6,315,720
Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir.
2011)
.......................................................................................
31
Rules 37 C.F.R. 42.103
..................................................................................................................
3 37 C.F.R. 42.15(a)
................................................................................................................
3 37 C.F.R. 42.8(b)(1)
.............................................................................................................
1
iv
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Patent No. 6,315,720
TABLE OF EXHIBITS
Exhibit No. Description Exhibit 1001 U.S. Patent No. 6,315,720
to Bruce A. Williams and Joseph K.
Kaminski, filed on Oct. 23, 2003, and issued on Nov. 13, 2001
(the 720 Patent)
Exhibit 1002 U.S. Patent No. 6,315,720 Prosecution History (720
prosecution history)
Exhibit 1003 U.S. Patent No. 6,045,501 to Marc Elsayed and Bruce
Williams, filed on Aug. 28, 1998, and issued on Apr. 4, 2000
(Elsayed)
Exhibit 1004 U.S. Patent No. 6,063,026 to Mark A. Schauss and
Patricia Kane, filed on Mar. 22, 1996, and issued on May 16, 2000
(Schauss)
Exhibit 1005 U.S. Patent No. 6,202,923 to Joseph H. Boyer et
al., filed on Aug. 23, 1999, and issued on Mar. 20, 2001
(Boyer)
Exhibit 1006 Guideline for the clinical use and dispensing of
thalidomide, R.J. Powell and J.M.M Gardner-Medwin, Postgrad Med. J.
(1994) 79, 901904 (Powell)
Exhibit 1007 Pharmacists role in clozapine therapy at a Veterans
Affairs medical center, Benjamin R. Dishman et al., Am. J. Hosp.
Pharm. (Apr. 1, 1994) 51, 899901 (Dishman)
Exhibit 1008 U.S. Patent No. 5,832,449 to David W. Cunningham,
filed on Nov. 13, 1995, and issued on Nov. 3, 1998 (Cunningham)
Exhibit 1009 U.S. Patent No. 6,055,507 to David W. Cunningham,
filed on Aug. 20, 1998, and issued on Apr. 25, 2000 (Cunningham
Divisonal)
Exhibit 1010 A Pregnancy-Prevention Program in Women of
Childbearing Age Receiving Isotretinoin, Allen A. Mitchell et al.,
New Eng. J. Med. (Jul. 13, 1995) 333:2, 10106 (Mitchell)
Exhibit 1011 S.T.E.P.S.TM: A Comprehensive Program for
Controlling and Monitoring Access to Thalidomide, Jerome B. Zeldis
et al., Clinical Therapeutics (1999) 21:2, 31930 (Zeldis)
Exhibit 1012 Transcript of the FDAs Forty-Seventh Meeting of the
Dermatologic and Ophthalmic Drugs Advisory Committee, Sept. 4, 1997
(FDA Meeting Part 1)
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Patent No. 6,315,720
Exhibit No. Description Exhibit 1013 Transcript of the FDAs
Forty-Seventh Meeting of the
Dermatologic and Ophthalmic Drugs Advisory Committee, Sept. 5,
1997 (FDA Meeting Part 2)
Exhibit 1014 CDC Meeting: 03/26/1997 Minutes and Agenda
Regarding Thalidomide (CDC Meeting)
Exhibit 1015 Assessing the Effectiveness of a Computerized
Pharmacy System, Reed M. Gardner et al., Decision Support Systems
in Critical Care, 1994, M.M. Schabot et al., eds. (Gardner)
Exhibit 1016 Review of computer applications in institutional
pharmacy19751981, Ken W. Burleson, Am. J. Hosp. Pharm. (1982)
39:5370 (Burleson)
Exhibit 1017 Interactive Voice Response Systems in Clinical
Research and Treatment, James C. Mundt, Psychiatric Services (May
1997) 48:5, 61112, 623 (Mundt)
Exhibit 1018 Passage of Chemicals into Human and Animal Semen:
Mechanisms and Significance, Thaddeus Mann and Cecelia Lutwak-Mann,
CRC Critical Reviews in Toxicology (1982) 11:1, 114 (Mann)
Exhibit 1019 Preparing for Thalidomides Comeback, Cori
Vanchieri, Annals of Internal Med. (Nov. 15 1997) 127:10, 95154
(Vanchieri)
Exhibit 1020 Development of a Computerized Drug Interaction
Database (MedicomSM) for Use in a Patient Specific Environment,
Arthur F. Shinn et al., Drug Inform. J. (1983) 17:20510 (Shinn)
Exhibit 1021 Decision support for drug prescription integrated
with computer-based patient records in primary care, R. Linnarsson,
Med. Inform. 18:2, 13142 (Linnarsson)
Exhibit 1022 A medication database a tool for detecting drug
interactions in hospital, P.E. Grnroos et al., Eur. J. Clin.
Pharmacol. (1997) 53:1317 (Grnroos)
Exhibit 1023 Prevalence of Alcohol and Drug Abuse in
Schizophrenic Inpatients, M. Soyka et al., Eur. Arch. Psychiatry
Clin. Nerosci. (1993) 242:36272 (Soyka)
Exhibit 1024 Alcohol, Cannabis, Nicotine, and Caffeine Use and
Symptom Distress in Schizophrenia, Edna Hamera et al., J. of
Nervous and Mental Disease (Sept. 1995) 183:9, 55965 (Hamera)
vi
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Patent No. 6,315,720
Exhibit No. Description Exhibit 1025 Substance Abuse and
Schizophrenia: Editors Introduction,
Thomas R. Kosten and Douglas M. Ziedonis, Schizophrenia Bulletin
(1997) 23:2, 18186 (Kosten)
Exhibit 1026 Substance Abuse and Women on Welfare, Jeffrey C.
Menill, National Center on Addiction and Substance Abuse at
Columbia University, June 1994 (Menill)
Exhibit 1027 Declaration of Jeffrey Fudin, R.Ph., B.S.,
Pharm.D., DAAPM, FCCP, FASHP (Fudin Decl.)
Exhibit 1028 Curriculum Vitae for Jeffrey Fudin, R.Ph., B.S.,
Pharm.D., DAAPM, FCCP, FASHP (Fudin CV)
Exhibit 1029 Center for Drug Evaluation and Research Approval
Package for Application Number: 18-662/S-038 (Accutane Label)
Exhibit 1030 Joint Claim Construction and Prehearing Statement,
Celgene Corp. v. Natco Pharma Ltd., NJD-2-10-cv-05197, Jul. 18,
2011 (Celgene Claim Construction Brief)
Exhibit 1031 Center for Drug Evaluation and Research Approval
Package for: Application Number NDA 20-785 Approval Letter(s),
Sept. 19, 1997, and Jul. 16, 1998 (FDA Thalomid Approval
Letters)
Exhibit 1032 Influence of Socially Desirable Responding in a
Study of Stress and Substance Abuse, John W. Welte and Marcia
Russell, Alcohol. Clin. Exp. Res. (Jul./Aug. 1993) 17:4, 75861
(Welte)
Exhibit 1033 Thalidomide BackUnder Strict Control, JAMA: Medical
News and Perspectives (Oct. 8, 1997) 278:14, 113537 (JAMA)
vii
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Patent No. 6,315,720
I. INTRODUCTION
Petitioner Coalition For Affordable Drugs VI LLC (CFAD),
requests an Inter
Partes Review (IPR) of Claims 132 (collectively, the Challenged
Claims) of U.S.
Patent No. 6,315,720 (the 720 Patent) (Ex. 1001) in accordance
with 35 U.S.C.
31119 and 37 C.F.R. 42.100 et seq.
II. GROUNDS FOR STANDING (37 C.F.R. 42.104(A))
Pursuant to 37 C.F.R. 42.104(a), Petitioner certifies that the
720 Patent is
available for IPR and that Petitioner is not barred or estopped
from requesting IPR
challenging the Claims of the 720 Patent on the grounds
identified in this Petition.
III. MANDATORY NOTICES (37 C.F.R. 42.8)
A. Real Parties-in-Interest (37 C.F.R. 42.8(b)(1))
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that
Coalition For
Affordable Drugs VI LLC (CFAD VI), Hayman Credes Master Fund,
L.P.
(Credes), Hayman Orange Fund SPC Portfolio A (HOF), Hayman
Capital
Master Fund, L.P. (HCMF), Hayman Capital Management, L.P. (HCM),
Hayman
Offshore Management, Inc. (HOM), Hayman Investments, L.L.C.
(HI), nXn
Partners, LLC (nXnP), IP Navigation Group, LLC (IPNav), J. Kyle
Bass, and
Erich Spangenberg are the real parties in interest
(collectively, RPI). The RPI
hereby certify the following information: CFAD VI is a wholly
owned subsidiary of
Credes. Credes is a limited partnership. HOF is a segregated
portfolio company.
HCMF is a limited partnership. HCM is the general partner and
investment manager
1
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Patent No. 6,315,720
of Credes and HCMF. HCM is the investment manager of HOF. HOM is
the
administrative general partner of Credes and HCMF. HI is the
general partner of
HCM. J. Kyle Bass is the sole member of HI and sole shareholder
of HOM. CFAD
VI, Credes, HOF and HCMF act, directly or indirectly, through
HCM as the general
partner and/or investment manager of Credes, HOF and HCMF. nXnP
is a paid
consultant to HCM. Erich Spangenberg is the 98.5% member of
nXnP. IPNav is a
paid consultant to nXnP. Erich Spangenberg is the 98.5% member
of IPNav. Other
than HCM and J. Kyle Bass in his capacity as the Chief
Investment Officer of HCM
and nXnP and Erich Spangenberg in his capacity as the
Manager/CEO of nXnP, no
other person (including any investor, limited partner, or member
or any other person
in any of CFAD VI, Credes, HOF, HCMF, HCM, HOM, HI, nXnP or
IPNav) has
authority to direct or control (i) the timing of, filing of,
content of, or any decisions or
other activities relating to this Petition or (ii) any timing,
future filings, content of, or
any decisions or other activities relating to the future
proceedings related to this
Petition. All of the costs associated with this Petition will be
borne by HCM, CFAD
VI, Credes, HOF and/or HCMF.
B. Related Judicial and Administrative Matters (37 C.F.R.
42.8(b)(2))
Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner states that the 720
Patent has
been the subject of the following lawsuits: Celgene Corp. et al.
v. Lannett Holdings, Inc. et
al., NJD-2-15-00697 (filed Jan. 30, 2015); Celgene Corp. v.
Natco Pharma Ltd., NJD-2-10-
cv-05197 (filed Oct. 8, 2010); Celgene Corp. et al. v. Barr
Laboratories, Inc. et al., NJD-2-
2
-
Patent No. 6,315,720
08-cv-03357 (filed July 3, 2008); Celgene Corp. et al. v. Barr
Laboratories, Inc. et al., NJD-2-
07-cv-05485 (filed Nov. 14, 2007); Celgene Corp. et al. v. Barr
Laboratories, Inc. et al., NJD-
2-07-cv-04050 (filed Aug. 23, 2007); Celgene Corp. et al. v.
Barr Laboratories, Inc. et al.,
NJD-2-07-cv-00286 (filed Jan. 18, 2007).
C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) and Service
Information (37 C.F.R. 42.8(b)(4))
Lead counsel is Sarah E. Spires, Reg. No. 61,501,
[email protected]. Back-up counsel are Ki O,
Reg. No. 68,952,
[email protected]; Dr. Parvathi Kota, Reg. No.
65,122,
[email protected]; and Paul J. Skiermont (pro
hac vice requested),
[email protected] of Skiermont Puckett LLP,
2200 Ross
Ave. Ste. 4800W, Dallas, Texas 75201, P: 214-978-6600/F:
214-978-6601. Petitioner
consents to electronic service.
IV. PAYMENT OF FEES (37 C.F.R. 42.15(a) and 42.103)
The required fees are submitted herewith in accordance with 37
C.F.R.
42.103(a) and 42.15(a). If any additional fees are due during
this proceeding, the
Office is authorized to charge such fees to Deposit Account No.
506293. Any
overpayment or refund of fees may also be deposited in this
Deposit Account.
V. IDENTIFICATION OF CHALLENGE
A. Overview of U.S. Patent No. 6,315,720
The 720 Patent is titled Methods for Delivering a Drug To A
Patient While
Avoiding The Occurrence Of An Adverse Side Effect Known Or
Suspected Of Being 3
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Patent No. 6,315,720
Caused By The Drug. (Ex. 1001 at Front Cover.) The underlying
application, U.S.
Patent Application Serial No. 09/694,217, was filed on October
23, 2000. The 720
Patent issued to Bruce Williams and Joseph K. Kaminski on
November 13, 2001. (Id.)
1. The 720 Patent Specification
The 720 Patent claims methods for delivering a drug to a
patient, while
avoiding the occurrence of adverse side effects. (Ex. 1001 at
Abstract.) The 720
Patent generally describes methods for the distribution to
patients of drugs,
particularly teratogenic drugs, in ways wherein such
distribution can be carefully
monitored and controlled. (Id. at 1:1316.) A teratogenic drug
can cause severe birth
defects when administered to a pregnant woman. (Id. at 1:2729.)
The 720
specification acknowledges that prior [m]ethods for monitoring
and educating
patients to whom a drug is distributed have been developed in
connection with a
known teratogenic drug (isotretinoin), including a pregnancy
prevention program.
(Id. at 2:1320.)
The invention of the 720 Patent was allegedly conceived in the
context of the
FDA approval of thalidomidea teratogenic drug effective in
treating a variety of
diseaseswhen the inventors were seeking methods to control the
distribution of
[thalidomide] so as to preclude administration to fetuses. (Id.
at 1:4664.)
The 720 Patents invention can be summarized as: (1) filling
prescriptions only
after consulting a computer readable storage medium to confirm
that the prescribers,
pharmacies, and patients are registered in a computer database;
(2) assigning patients
4
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Patent No. 6,315,720
to risk groups based on the risk that the drug will cause
adverse side effects and
entering the risk group assignment in the storage medium; (3)
determining the
acceptability of the likely adverse effect; and (4) generating a
prescription approval
code to said pharmacy before said prescription is filled. (Id.
at 2:493:4.) The 720
Patent specification also teaches that [t]he invention is not
limited to the distribution
of teratogenic drugs; other potentially hazardous drugs may also
be distributed in
accordance with embodiments of this invention in such a fashion
that persons for
whom such drugs are contraindicated will not receive them. (Id.
at 3:2126.)
The patent also discloses that when a patient is registered in
the computer
readable storage medium, information probative of the risk of a
drugs side effects is
also collected from the patient. (Id. at 6:3033.) This
information can then be
compared with a defined set of risk parameters for the drug,
allowing for assignment
of the patient to a particular risk group. (Id. at 6:3336.) If
the risk of adverse side
effects is deemed acceptable, the patient may receive the drug
from a registered
pharmacy, subject to conditions such as a negative pregnancy
test, but may not receive
refills without a renewal prescription from the prescriber. (Id.
at 11:6212:8.)
2. The 720 Claims
The 720 Patent has two independent claims and 30 dependent
claims. Claim 1
is representative and is reproduced below.
In a method for delivering a drug to a patient in need of the
drug, while
avoiding the occurrence of an adverse side effect known or
suspected of
5
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Patent No. 6,315,720
being caused by said drug, wherein said method is of the type in
which
prescriptions for said drug are filled only after a computer
readable
storage medium has been consulted to assure that the prescriber
is
registered in said medium and qualified to prescribe said drug,
that the
pharmacy is registered in said medium and qualified to fill
the
prescription for said drug, and the patient is registered in
said medium
and approved to receive said drug, the improvement
comprising:
a. defining a plurality of patient risk groups based upon a
predefined set of risk parameters for said drug;
b. defining a set of information to be obtained from said
patient,
which information is probative of the risk that said adverse
side effect is
likely to occur if said drug is taken by said patient;
c. in response to said information set, assigning said patient
to at
least one of said risk groups and entering said risk group
assignment in
said medium;
d. based upon said information and said risk group
assignment,
determining whether the risk that said adverse side effect is
likely to
occur is acceptable; and
e. upon a determination that said risk is acceptable, generating
a
prescription approval code to be retrieved by said pharmacy
before said
prescription is filled.
(Id. at 18:1742.) All other claim limitations are listed within
Ground 1 below.
3. The 720 Prosecution History
During prosecution of U.S. Patent Application No. 09/694,217
(filed October
23, 2000), which led to the 720 Patent, the Examiner initially
rejected Claims 127 as
obvious under 35 U.S.C. 103(a) over U.S. Patent No. 6,045,501
(Ex. 1003, Elsayed)
6
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Patent No. 6,315,720
in view of U.S. Patent No. 6,063,026 (Ex. 1004, Schauss). (See
Ex. 1002 at 5758.1)
At this time, Claims 132 were pending. (Id. at 56.) Claim 1, the
only independent
claim, recited a method for delivering a drug to a patient in
need of the drug while
avoiding the occurrence of an adverse side effect known or
suspected of being caused
by said drug. (Id. at 44.)
The Examiner rejected Claims 127, stating that Elsayed suggested
the use of
the information to evaluate risk levels, while Schauss taught a
medical diagnostic
analysis system that evaluates patient data obtained from
medical testing or patient
questioning for drugs contraindications. (Id. at 58.) The
Examiner concluded that it
would have been obvious to one of ordinary skill in the art at
the time of the invention
to implement the screening for drug contraindications suggested
in Elsayed et al. with
the method of Schauss et al., since Schauss et al. teach the
particular steps for
performing the analysis. (Id. at 58.) Regarding Claim 6, the
Examiner stated that
although Elsayed does not specifically teach that data received
by facsimile
transmission is entered by an OCR software, it is inherent that
this data must be
entered into database. (Id. at 58.) The Examiner also objected
to Claims 2832 as
being dependent upon a rejected base claim, but would be
allowable if rewritten in
independent form. (Id. at 59.)
1 Except for the prosecution history, exhibit cites herein are
directed to the internal
page numbers of the exhibit, rather than to the Exhibits Bates
numbers.
7
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Patent No. 6,315,720
In response, applicants amended Claim 1 by adding, among other
limitations,
upon a determination that said risk is acceptable, generating a
prescription approval
code to be retrieved by said pharmacy before said prescription
is filled. (Id. at 87.)
Based on this amendment, applicants argued that Elsayed,
although teaching a
method which contains many of the steps of the present
invention, contains no
disclosure of the generation of a prescription approval code as
recited in amended
Claim 1. (Id. at 85.) Applicants further argued that [a]lthough
Schauss may describe
a medical diagnostic analysis system that evaluates patient data
obtained from
questioning a patient or medical testing, Schauss contains no
disclosure remotely
related to the generation of a prescription approval code, this
being the subject of
Applicants claims. (Id. at 86.)
In response, the Examiner rejected the claims as obvious over
Elsayed in view of
Schauss and Boyer, U.S. Patent No. 6,202,923 (Ex. 1005, Boyer ),
which includes a step
for generating a prescription number or code associated with
said prescription by a
computer workstation. ( Id. at 9192.)
In response, applicants argued:
As amended on March 23, 2001, Claim 1 further requires an
assessment,
based upon the risk group assignment and the information
collected
from the patient, as to whether the risk of the side effect
occurring is
acceptable. Upon a determination that the risk is acceptable,
and only upon
such a determination, a prescription approval code is generated,
which must
be retrieved by the pharmacy before the prescription may be
filled. Thus,
8
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Patent No. 6,315,720
the prescription approval code is not merely a number that is
associated
with the prescription, but instead represents the fact that a
determination
has been made that the risk of the side effect occurring is
acceptable, and
that approvalan affirmative decisionhas been made for the
prescription to be filled. Boyer does not disclose or suggest
such an
approval code.
(Id. at 10607.) Applicants further argued that in Boyer, the
prescription number is
simply an identifier for the prescription, and is not an
approval code, as recited in
Applicants claims, and that Boyer provides no indication that a
prescription approval
code, as described and claimed in the instant application, must
be generated and
retrieved by the pharmacist before the prescription may be
filled. (Id. at 107.)
The applicants amended Claim 28 to be an independent claim, and
then argued
that because [a]ny proper combination of the disclosure of Boyer
with that of
Elsayed and Schauss does not teach or suggest the invention
defined by Applicants
claims, the Examiner should withdraw the 103 rejection. (Id. at
10607.)
After this response, all of the 720 Patent claims were allowed.
(Id. at 111.)
B. Claim Construction of Challenged Claims
A claim subject to IPR receives the broadest reasonable
construction in light
of the specification of the patent in which it appears. 37
C.F.R. 42.100(b); see In re
Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279 (Fed. Cir. 2015).
In applying such a
standard, the broadest reasonable construction of claim language
is not one that
permits any reading, but instead is one that must be made in
light of the specification
9
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Patent No. 6,315,720
as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation
omitted).
Unless otherwise noted, Petitioner accepts, for purposes of IPR
only, that the
claim terms of the 720 Patent are presumed to take on the
ordinary and customary
meaning that they would have to one of ordinary skill in the
art.2
1. Consulted
Consulted means accessed and considered. (Ex. 1030 at 3; Ex.
1027 39.)
2. Teratogenic effect
Teratogenic effect means any effect that disturbs the normal
growth and
development of an embryo or fetus. (Ex. 1030 at 2; Ex. 1027
40.)
2 Petitioner notes that, in some instances, the patentee has
defined claim terms apart
from their plain meaning. See Pacing Techs., LLC v. Garmin Intl,
Inc., 778 F.3d 1021,
1024 (Fed. Cir. 2015). These terms include drug, computer
readable storage
medium, patient risk groups, risk parameters, risk group
assignment, likely to
occur, prescription approval code, counseled, risk avoidance
measures, and
informed consent. (Ex. 1001 at 3:3538, 3:4548, 4:5456, 5:2933,
6:307:19,
8:4557, 9:826, 10:4146, 13:4464.)
10
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Patent No. 6,315,720
3. Adverse side effect
Adverse side effect means any unfavorable abnormality, defect,
mutation,
lesion, degeneration or injury which may be caused by taking the
drug. (Ex. 1030 at
3; Ex. 1027 41; see Ex. 1001 at 3:3844.)
C. Statement of Precise Relief Requested for Each Claim
Challenged
1. Claims for Which Review is Requested
Petitioners request IPR under 35 U.S.C. 311 of Claims 132 of the
720
Patent, and cancellation of these 32 claims as unpatentable.
2. Statutory Grounds of Challenge
Petitioners request IPR of Claims 132 of the 720 Patent in view
of the
following references, each of which is prior art to the 720
Patent under 35 U.S.C.
102(a) and (b) or 103. The Examiner did not reference any of the
prior art listed in
the following chart in any Office Action. (See generally, Ex.
1002.) Claims 132 are
unpatentable under 35 U.S.C. 103:
Ground Proposed Rejections for the 720 Patent Exhibit Number(s)
1 Claims 132 are obvious under 35 U.S.C. 103(a) in
view of Mitchell (Ex. 1010), Dishman (Ex. 1007), and
Cunningham (Ex. 1008).
1007, 1008, and 1010
D. Overview of the State of the Art and Motivation to
Combine
By October of 2000, it was well recognized in the art that
teratogenic drugs
which can cause birth defectsneeded to be regulated. (See, e.g.,
Ex. 1006 at 90104;
11
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Patent No. 6,315,720
Ex. 1010 at 10105.) The central regulatory goal was to avoid
pregnancy in patients
treated with the drug. (See, e.g., Ex. 1010 at 101.) One notable
case of a drug marketed
through methods to prevent its use in pregnant patients is
isotretinoin, marketed
under the trade name Accutane. (See Ex. 1010 at 101.) Rather
than remove this drug
from the market once its teratogenicity was realized,
isotretinoin became part of a
manufacturer-sponsored Pregnancy Prevention Program (PPP). (Ex.
1010 at 101.)
The program, among other features, included the distribution to
physicians of a kit
that included informed consent documents and patient counseling
information.
(Ex. 1010 at 101.) In particular, patients were warned against
the teratogenic risk of
isotretinoin and the need to prevent pregnancy. (Ex. 1010 at
105.) Patients were also
advised as to effective available methods of birth control. (See
Ex. 1010 at 103.)
Thalidomide is a drug that originated in Germany in 1957. (Ex.
1001 at 1:40
41.) Doctors initially prescribed the drug as a sedative, but
quickly noticed its
effectiveness in treating a form of leprosy, erythema nodosum
leprosum (ENL), as
well. (Ex. 1011 at 32021.) However, shortly after thalidomide
came on the market,
doctors realized that the drug caused severe birth defects in
infants whose mothers
took the drug while pregnant. (Ex. 1011 at 320.) As a result,
thalidomide was generally
taken off of most markets by 1962. (Ex. 1001 at 1:4445.) Due to
thalidomides
therapeutic effects, the drug was reintroduced in the United
States in the 1990s with
the understanding it could be marketed only with strict
controls, and gained FDA
approval to treat ENL in 1998. (See Ex. 1006 at 901; Ex. 1011 at
320.) 12
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Patent No. 6,315,720
Doctors and pharmacists interested in bringing thalidomide to
the market with
restrictions to protect from its teratogenic effects considered
the Accutane PPP, with
its focus on counseling, as a starting point. (Ex. 1012 at
11011; see Ex. 1014 at 1.)
They also considered modeling a thalidomide program on
experiences with other
hazardous drugs, including clozapine (trade name Clozaril). (Ex.
1012 at 11112.)
As early as 1997, medical professionals observed that the
prescription control
methods for clozapine, an anti-depressant with potential adverse
effects indicated by
white blood cell counts (WBCs), could be copied for thalidomide.
(Ex. 1012 at
112.) In particular, these prescription control methods included
keeping records of
patients taking the drug, as well as physicians and pharmacists
pre-approved to
prescribe and dispense the drug. (Ex. 1007 at 899900; see Ex.
1012 at 11519;
Ex. 1014 at 9, 24.) The clozapine patients were additionally
required to submit to
weekly WBC testing and could only have a prescription for
clozapine filled if the test
results fell within a pre-designated range. (Ex. 1007 at 899;
see Ex. 1012 at 112;
Ex. 1014 at 8.)
It was also well known in the art prior to 2000 that
prescription records can
be kept in a computerized system. (See, e.g., Ex. 1015 at 174;
Ex. 1016 at 56, 6063,
68; Ex. 1027 56.) Such records would include information about
the patient such as
their sex, height, weight, allergies, and other health-related
measures. (See Ex. 1016 at
59; Ex. 1027 56.) Physicians and pharmacists had used
computerized systems to
track their patients since at least 1975. (See, e.g., Ex. 1016
at 53; Ex. 1015 at 174, 18213
-
Patent No. 6,315,720
83.) Practitioners then used this data to determine (1) whether
to prescribe a drug to a
particular patient, and (2) how long a patient should take the
medication. (See Ex. 1016
at 53, 6367.)
Thus, in the case of thalidomide or any teratogenic drug, those
of ordinary skill
in the art would have beenand indeed weremotivated to combine
the method
for avoiding pregnancy with a computerized tracking system that
only permits filling
prescriptions for the drug when certain conditions (e.g.,
non-pregnancy) are met. (See
Ex. 1033 at 1136 (Celgene has drafted a plan that it hopes will
prevent fetal exposure
to the drug. The plan is built on experience with restrictions
on such other drugs
with severe adverse effects as Accutane , used to treat severe
acne, and Clozaril
, used to treat schizophrenia [and] a tracking system would be
in place to ensure
compliance.); Ex.1012 at 11112; Ex. 1027 5960.)
1. Summary of the Petitions Prior Art References
a. Mitchell (Ex. 1010)
Mitchell constitutes prior art under 35 U.S.C. 102(b) because it
was published
in 1995. (Ex. 1010 at Cover.) During prosecution of the 720
Patent, the examiner did
not consider this reference. (See Ex. 1001 at Cover.)
Mitchell discloses a pregnancy prevention program implemented to
minimize
pregnancies among women treated with the known teratogenic drug
isotretinoin. (See
Ex. 1010 at 10105.) The program sought to keep the drug
available while
minimizing the teratogenic hazard. (Id. at 105.) Additionally,
the programtargeted
14
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Patent No. 6,315,720
at both prescribers and patientsinstructed prescribers to warn
patients of risks,
obtain negative pregnancy tests, and delay therapy until the
second or third day of the
next normal menstrual period. (Id. at 101.) The program also
provided materials to
patients such as information brochures and contraceptive
information. (Id. at 101.)
Mitchell also describes counseling patients in relation to
isotretinoins
teratogenic effects. (Id. at 105.) Some implementations of the
program included
warnings about the need to have a negative blood pregnancy test
before starting
therapyand to use effective birth control one month before
starting therapy, during
therapy, and one month after completing it. (Id. at 103.)
b. Dishman (Ex. 1007)
Dishman constitutes prior art under 35 U.S.C. 102(b) because it
was published
in 1989. (Ex. 1007 at 899.) During the prosecution of the 720
Patent, the examiner
did not consider this reference. (See Ex. 1001 at Cover.)
Dishman discloses a program for controlling the dispensing of
clozapine, an
antipsychotic drug, to veterans. (Ex. 1007 at 899.) Clozapine is
associated with the
life-threatening side effect of agranulocytosis. (Ex. 1012 at
112.) Dishman describes a
monitoring program instituted by the Department of Veterans
Affairs (VA) in 1991
to prevent contraindicated individuals from receiving clozapine.
(Ex. 1007 at 900.)
Specifically, Dishman teaches that the VAs program established a
National
Clozapine Coordinating Center (NCCC) to review each clozapine
candidates file
before granting approval for use and weekly tracking. (Id. at
900.) Prior to this
15
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Patent No. 6,315,720
approval, each patient underwent extensive evaluation and
documentation to identify
contraindications, including pregnancy. (Id. at 900.)
Additionally, for prescription or
use of clozapine, prescribers and patients had to register with
the Clozaril National
Registry, which requires weekly monitoring of a patients white
blood cell counts and
limits the quantity of medicine dispensed at one time. (Id. at
899.) This process
requires the cooperation and coordinated efforts of the patient,
physician, laboratory,
and pharmacy. (Id. at 899.) The NCCC also mandated that each
hospital have a
computerized clozapine prescription lockout system, which tied
the hospitals
laboratory database to the outpatient pharmacy dispensing
software. (Id. at 900.) Thus,
clozapine prescriptions could only be processed when certain
pre-defined clinical
criteria were metspecifically, when white blood cell counts were
within defined
limits. (Id. at 899.)
c. Cunningham (Ex. 1008)
The Cunningham patent constitutes prior art under 35 U.S.C.
102(b) because it
was filed in 1995 and granted in 1998. (Ex. 1008 at Cover.)
During the prosecution of
the 720 Patent, the examiner did not consider this reference.
(See Ex. 1001 at Cover.)
The examiner did consider, but did not cite, a divisional of
this reference. (See
Ex. 1001 at Cover; Ex. 1010 at Cover.)
Cunningham discloses a method of dispensing pharmaceutical
product samples
by linking prescribers and pharmacies to a central computing
station. (Ex. 1008 at
Cover.) Specifically, before filling any prescription for a
pharmaceutical trial product,
16
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Patent No. 6,315,720
the pharmacy must upload defined information into the central
computing station.
(See id. at 11:613.) Only if the central computing station
establishes that the uploaded
information is valid can the central computing station issue a
pharmacy approval code
for the pharmacy to then dispense the pharmaceutical product.
(See id. at 11:1323.)
E. Level of Ordinary Skill in the Art
A persona of ordinary skill in the art (POSA) in pharmaceutical
prescriptions
as of October 23, 2000the earliest possible priority date for
the 720 Patent
would typically have either a Pharm. D. or a BS in pharmacy with
approximately 5-
10 years of experience and a license to practice as a registered
pharmacist in any one
or more of the United States. (Ex. 1027 16.) An ordinarily
skilled artisan may
work as part of a multi-disciplinary team and draw upon not only
his or her own
skills, but also take advantage of certain specialized skills of
others on the team, to
solve a given problem and care for varying patient populations.
(Ex. 1027 17.)
VI. DETAILED EXPLANATION OF THE CHALLENGE
A. Ground 1: Claims 132 of U.S. Patent No. 6,315,720 are obvious
under 35 U.S.C. 103(a) over Mitchell in view of Dishman and in
further view of Cunningham and the knowledge of one of ordinary
skill in the art.
1. Claim 1 is obvious over Mitchell in view of Dishman and in
further view of Cunningham.
Claim 1 of the 720 Patent is written in Jepson format, meaning
that the claim
first describes the scope of the prior art and then claims an
improvement over the
17
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Patent No. 6,315,720
prior art. Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364,
1368 (Fed. Cir. 2001).
Specifically, the Claim 1 preamble recites:
In a method for delivering a drug to a patient in need of the
drug, while
avoiding the occurrence of an adverse side effect known or
suspected of
being caused by said drug, wherein said method is of the type in
which
prescriptions for said drug are filled only after a computer
readable
storage medium has been consulted to assure that the prescriber
is
registered in said medium and qualified to prescribe said drug,
that the
pharmacy is registered in said medium and qualified to fill
the
prescription for said drug, and the patient is registered in
said medium
and approved to receive said drug, the improvement
comprising:
(Ex. 1001 at 18:1727 (emphasis added).) Because a preamble is
impliedly admitted
to be prior art when a Jepson claim is used, the patentee has
admitted that the Claim
1 preamble is prior art, rather than a point of novelty. Pentec,
Inc. v. Graphic Controls
Corp., 776 F.2d 309, 315 (Fed. Cir. 1985); see In re Glatt Air
Techniques, Inc., 630 F.3d
1026, 1028 (Fed. Cir. 2011) (rejecting a claim as obvious in
view of the admitted
prior art from the claim preamble and a single cited
reference).
An ordinarily skilled artisan, when seeking to treat patients
with a drug known
or suspected of causing an adverse side effect as in Claim 1s
preamble, would look to
Mitchell for guidance on an approach that seeks to keep the drug
available while
minimizing the hazard, and would garner from its recommendations
for
delivering a drug to a patient in need of the drug, while
avoiding the occurrence of an
adverse side effect known or suspected of being caused by said
drug, as the
18
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Patent No. 6,315,720
preamble requires. (Ex. 1010 at 105; Ex. 1027 76.) See In re
Icon Health & Fitness, Inc.,
496 F.3d 1374, 1380 (Fed. Cir. 2007) (One skilled in the art
would naturally look to
prior art addressing the same problem as the invention at hand,
and in this case would
find an appropriate solution.).
With respect to Claim 1 of the 720 Patent, an ordinarily skilled
artisan would
understand from Mitchell the desirability, when treating
patients with drugs associated
with adverse side effects to certain risk groups, of defining a
plurality of patient risk
groups based upon a predefined set of risk parameters for said
drug as required by
Claim 1(a), defining a set of information to be obtained from
said patient, which
information is probative of the risk that said adverse side
effect is likely to occur if
said drug is taken by said patient as required by Claim 1(b), in
response to said
information set, assigning said patient to at least one of said
risk groups as required
by the first portion of Claim 1(c), and based upon said
information and said risk
group assignment, determining whether the risk that said adverse
side effect is likely
to occur is acceptable as required by Claim 1(d). (See Ex. 1010
at 10102, 105; Ex.
1027 78.)
Specifically, Mitchell teaches a patient-qualification checklist
for assigning
patients to the risk groups to which a drug with teratogenic
side effects, such as
isotretinoin, can and cannot be administered, as in Claim 1(a),
based on the
unacceptable risk of teratogenic side effects to a fetus, as in
Claim 1(d). (Ex. 1010 at
101; Ex. 1027 79, 94.) Mitchells risk group list includes, for
example, women of 19
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Patent No. 6,315,720
childbearing age and women who were at high risk of becoming
pregnant, with
patients outside of these groups falling into a separate, lower
risk category. (Ex. 1010
at 102, 105.) One of ordinary skill in the art would understand
that a prescriber would
assign a patient to these various risk groups, as in the first
portion of Claim 1(c), by
obtaining information from the patient such as their gender, and
whether they are of
childbearing age or at a high risk of becoming pregnant, which
are probative of
the risk that said adverse side effect is likely to occur if
said drug is taken by said
patient, as in Claim 1(b). (Ex. 1010 at 102, 105; Ex. 1027
81.)
With respect to the second portion of Claim 1(c)entering said
risk group in
said mediuman ordinarily skilled artisan would understand from
Mitchell that
written records should be kept relating to risk group and
related information.
(Ex. 1027 84.) For example, Mitchell recorded certain
information via survey-
enrollment consent forms. (Ex. 1010 at 102.) Although Mitchell
does not explicitly
mention keeping these records in a computer readable storage
medium, because
Mitchell published the aggregated patient risk group information
collected, it would
have been obvious to one of ordinary skill in the art that
Mitchell inherently entered
the risk group information in a computer readable storage
medium. (Ex. 1027 86.)
See Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186,
11941195 (Fed. Cir. 2014)
(We have recognized that inherency may supply a missing claim
limitation in an
obviousness analysis.). Additionally, it would have been obvious
to an ordinarily
skilled artisan that electronic records of information such as
the patient risk group 20
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Patent No. 6,315,720
assignment would be useful and easy to achieve through the entry
into a computer.
(Ex. 1027 85.) See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007)
(finding obviousness where the skilled artisan would have had
that reasonable
expectation of success that [application of the prior art
technique] would work for its
intended purpose.).
Like Mitchell, which teaches guidelines for tightly-controlling
the dispensing of
isotretinoin, Dishman discloses a program for tightly
controlling the dispensing of the
antipsychotic drug clozapine. (See Ex. 1007 at 899901.) Armed
with the disclosure of
Mitchell, an ordinarily skilled artisan would have been
motivated to look to the system
disclosed in Dishman to further implement a computerized
registry for delivering a
drug to a patient in need of the drug, while avoiding the
occurrence of an adverse side
effect known or suspected of being caused by said drug. (Ex.
1001 at 18:1618; Ex.
1027 88.) See Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery,
Inc., 774 F.3d 968, 977
(Fed. Cir. 2014) (When a claimed invention involves a
combination of elements,
however, any need or problem known in the relevant field of
endeavor at the time of
invention can provide a reason to combine.). Indeed, those of
ordinary skill in the art
did look to the same isotretinoin system described in Mitchell
with respect to the 720
Patent. (Ex. 1001 at 2:1335; Ex. 1033 at 1036.) See Rogers v.
Desa Intl, Inc., 198 Fed.
Appx. 918, 922 (Fed. Cir. 2006) (Evidence that those of ordinary
skill in the art in
fact combined the prior art teachings as claimed is certainly
evidence that they were
21
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Patent No. 6,315,720
motivated to do so. Such evidence shows the knowledge of the
skilled artisan at the
time of the invention, which can provide the basis for a
motivation to combine.).
With respect to the second portion of Claim 1(c)entering said
risk group in
said mediumDishman discloses the storage of the patients
clinical and
demographic information on a computer readable storage medium.
(Ex. 1007 at
899.) For example, Dishman teaches that the NCCC requires that
each hospital have a
computerized clozapine prescription lockout system[that] ties
the hospitals
laboratory database to the outpatient pharmacy dispensing
software. (Ex. 1007 at
900.) An ordinarily skilled artisan would have understood from
the Dishman
reference that this computerized system must include the
patients risk group
assignment data in order to determine which prescriptions should
be locked out.
(Ex. 1027 91.) See Par Pharm., Inc., 773 F.3d at 11941195.
The final portion of the 720 Patents Claim 1Claim 1(e)requires
that,
upon a determination that said risk is acceptable, generating a
prescription approval
code to be retrieved by said pharmacy before said prescription
is filled. (Ex. 1001 at
18:4042.) This mechanism would have been obvious to an
ordinarily skilled artisan
upon reading Dishman, which discloses approval of acceptable
risk through a registry
[that] permits community and hospital pharmacies to dispense
clozapine only upon
the pharmacists verification that the WBC count is within
acceptable limits. [T]he
lockout system prevents the filling of any clozapine
prescription if the computer
22
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Patent No. 6,315,720
notices three consecutive drops in WBC count. (Ex. 1007 at
899900; Ex. 1027
9596.)
Additionally, as the 720 Patent correctly states, [s]uitable
computer readable
storage media will be apparent to one of ordinary skill in the
art, once armed with
the teachings of the present application.) (Ex. 1001 at 5:1116.)
An approval code
system such as that required by Claim 1(e)already known to those
of ordinary skill
in the art at the timewould be an obvious mechanism for one of
ordinary skill in
the art to use in order to implement Dishmans lockout system.
(Ex. 1027 97.) See
Bayer Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341,
1347 (Fed. Cir. 2009)
(When there is a design need or market pressure to solve a
problem and there are a
finite number of identified, predictable solutions, a person of
ordinary skill has good
reason to pursue the known options within his or her technical
grasp. If this leads to
the anticipated success, it is likely the product not of
innovation but of ordinary skill
and common sense.) (quoting KSR Intl Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
It would have been further obvious to one of ordinary skill in
the art to utilize
the Claim 1(e) approval codes to implement Dishmans lockout
system, in light of
Cunninghams disclosure of an approval code lockout system for a
pharmacy:
If authenticity is not established, it follows that the
participating
pharmacy cannot dispense corresponding pharmaceutical
product.
However, if authenticity is established then the pharmac[ys]
terminal
dials the central computing station and data and information
from the
pharmac[ys] authorization media and personal identification is
uploaded 23
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Patent No. 6,315,720
to the database of the central computing station 12. Assuming
full
validation, the central computing station issues a pharmacy
approval code and the pharmacy records that approval code on the
actual presented product trial media 18. Once validation is
established
the pharmacy then dispenses pharmaceutical trial product (Ex.
1008 at 11:68, 1723 (emphasis added); Ex. 1027 98.) See KSR Int'l
Co., 550
U.S. at 41617 (holding that where a straightforward combination
of references
[s]imply arranges old elements with each performing the same
function it had been
known to perform and yields no more than one would expect from
such an
arrangement, the combination is obvious.) (internal quotations
and citations
omitted).
In view of the guidelines for the avoidance of treating pregnant
patients with
isotretinoin taught by Mitchell, it would have been obvious to
an ordinarily skilled
artisan to implement the methods disclosed in Dishman and
Cunningham to limit
dispensation of a drug associated with adverse effects to
certain risk groups.
(Ex. 1027 99.) See Abbott Labs v. Andrx Pharms., Inc., 452 F.3d
1331, 1345 (Fed. Cir.
2006) (finding substantial question of invalidity because the
combination of references
for the reduction of systemic side effects would not be
surprising and would not be
unexpected.). Therefore, an ordinarily skilled artisan treating
a patient with a
teratogenic or other risk-laden drug in accordance with the
guidelines disclosed in
Mitchell would look to published methods for limiting
dispensation of other drugs
such as the clozapine registry found in Dishman and the approval
code system
24
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Patent No. 6,315,720
taught by Cunninghamand would view Claim 1 of the 720 Patent
obvious in view of
these three references. (Ex. 1027 100.) See Dystar Textilfarben
GmbH v. C.H. Patrick
Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (The motivation need
not be found in the
references sought to be combined, but may be found in any number
of sources,
including common knowledge, the prior art as a whole, or the
nature of the problem
itself.).
2. Dependent Claims 26 are obvious over the prior art of Ground
1, and more specifically over Mitchell in view of Dishman and in
further view of the knowledge of one of ordinary skill in the
art.
Claims 26 depend from Claim 1, and merely add limitations
already known in
the field and obvious to one of ordinary skill in the art. Claim
2 requires that in
response to said risk group assignment, said patient is
counseled as to the risks of
taking said drug and advised as to risk avoidance measures,
while Claim 3 requires
that the Claim 2 counseling comprises full disclosure of said
risks, Claim 4 requires
that said prescription is filled only following [the Claim 3]
full disclosure and
informed consent of said patient, Claim 5 requires that said
risk group assignment
and [Claim 4] informed consent is verified by said prescriber at
the time that said
patient is registered in said computer readable storage medium,
and Claim 6 requires
that said risk group assignment and said informed consent is
transmitted to [the
Claim 5] computer readable storage medium by facsimile and
interpreted by optical
character recognition software. (Ex. 1001 at 18:4358 (emphasis
added).)
25
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Patent No. 6,315,720
Mitchell teaches that the disclosed program encourages
communication
between physicians and patients regarding the drugs teratogenic
risk and the need to
prevent pregnancy, and that physicians were further provided
with guidelines:
instructing them, for example, to warn patients of risks, obtain
negative
pregnancy tests, and delay therapy until the second or third day
of the
next normal menstrual period. They also included a
patient-qualification
checklist, an information brochure for patients,
contraceptive
information, information about and the necessary forms for a
contraception referral program (in which the manufacturer
would
reimburse patients for a visit to another physician for
contraceptive
counseling, and a consent form.
(Ex. 1010 at 101 (emphasis added), 105.) Mitchell additionally
discloses that:
the manufacturer replaced traditional medication bottles with a
10-
capsule blister pack that contained information directed
specifically at
women: the package included warnings about the risks of
becoming
pregnant while taking isotretinoin or during the month after
treatment,
an avoid pregnancy icon behind each capsule, and line drawings
of
malformations associated with isotretinoin.
(Ex. 1010 at 101.) This information meets the counseling and
disclosure requirements
of Claims 2 and 3. (Ex. 1027 104.)
In addition to the consent form contained in the physician
information
discussed above, Mitchell further teaches of the need for
patient consent and that
the program also included survey-enrollment consent forms. (Ex.
1010 at 102, 105.)
26
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Patent No. 6,315,720
These teachings meet the disclosure and informed consent
treatment prerequisites of
Claim 4.
Additionally, because Mitchell teaches that [t]he enrollment
forms were
screened on receipt to exclude enrollments that were apparently
fraudulent, men, and
previously enrolled women, and then [t]he eligible women were
assigned, at
random, to be followed by one of the two methods, it would have
been obvious to
one of ordinary skill in the art that the prescribing doctor
would have verified the
disclosed requirements for treatmentsuch as the patients
informed consent and risk
group assignmentwhen screening the enrollment forms and
registering the patient
in the database for following. (Ex. 1010 at 102; Ex. 1027
10708.) Dishman further
renders this Claim 5 verification obvious, teaching that:
the pharmacist screens potential candidates before they
undergo
extensive evaluation. The screening involves reviewing the
patients case
with the requesting practitioner, reviewing the patients file,
and
interviewing the patient to ensure that the patient and family
members
are committed to weekly blood tests and follow-up. This
screening
ensures that the physician does not waste time evaluating
patients who
are ineligible for clozapine therapy. After a patient has
been
determined eligible for clozapine therapy, the pharmacist
forwards all
pertinent information to the NCCC. After NCCC approval, the
pharmacist enrolls the patient into the hospitals clozapine
tracking
system, and clozapine therapy is begun.
(Ex. 1007 at 900 (emphasis added); Ex. 1027 10910.)
27
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Patent No. 6,315,720
The previous disclosure also renders obvious to one of ordinary
skill in the art
that the informed consent, risk group assignment, and other
portions of the patients
file in the Dishman system are transmitted to the NCCCs database
described above
with respect to Claim 1(c), and as required by the first portion
of Claim 6. (Ex. 1027
112.) Dishman further teaches that, [a]fter each weekly
follow-up appointment, the
pharmacist faxes a tracking sheet containing an evaluation of
the patient to the
NCCC. (Ex. 1007 at 901.) Because it was within the knowledge of
one of ordinary
skill in the art to transfer paper data into a computer database
by fax, which is then
interpreted by optical character recognition [OCR] software, it
would have been
obvious to one of ordinary skill in the art that the Dishman
system would have used
OCR software to load the tracking sheet information into the
NCCC database
(Ex. 1027 114.) Consequently, [i]t also would have been obvious
to an ordinarily
skilled artisan that paper risk group assignments and informed
consents could
similarly be transferred to the database through fax and OCR, as
the last portion of
Claim 6 requires. (Ex. 1027 114.) See Perfect Web Techs., Inc.
v. InfoUSA, Inc., 587 F.3d
1324, 1329 (Fed. Cir. 2009) (KSR expanded the sources of
information for a properly
flexible obviousness inquiry to include the background
knowledge, creativity, and
common sense of the person of ordinary skill.).
28
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Patent No. 6,315,720
3. Dependent Claims 710 are obvious over the prior art of Ground
1, and more specifically over Mitchell in view of Dishman and in
further view of the knowledge of one of ordinary skill in the
art.
Claims 710 depend from Claim 1, and merely add limitations
already known
in the field and obvious to one of ordinary skill in the art.
Claim 7 requires that the
information to be obtained from said patient prior to treatment
includes the
results of diagnostic testing, while Claims 8, 9, and 10
respectively require that the
diagnostic testing is probative of the onset of said adverse
side effect, is probative
of the concentration of said drug in a tissue of said patient,
and comprises genetic
testing. (Ex. 1001 at 18:5967.)
Both Mitchell and Dishman disclose extensive diagnostic testing,
including testing
probative of the onset of said adverse side effect, prior to
treatment. Thus, both
Mitchell and Dishman teach the limitations of Claims 7 and 8.
Specifically, Mitchell
teaches warnings about the need to have a negative blood
pregnancy test before
starting therapy since birth malformations [are] associated with
isotretinoin.
(Ex. 1010 at 101, 103.) Additionally, Dishman discloses that
[t]he NCCC guidelines
require extensive patient evaluation and documentation. A
complete physical
examination, including laboratory testing and
electrocardiographic analysis, is
required. (Ex. 1007 at 900.)
With respect to Claim 9, it would have been obvious to one of
ordinary skill in
the art to include, within the extensive diagnostic testing
taught by Mitchell and
Dishman, testing for the drug concentration in patient tissue.
(Ex. 1027 12223.)
29
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Patent No. 6,315,720
Specifically, for any patient that had previously been treated
with the drug, it would
have been obvious to one of ordinary skill in the art to conduct
diagnostic testing
probative of the concentration of the drug remaining in the
patients body. (Ex. 1027
122.) However, because many drugs do not generally distribute
uniformly in the
body, but instead are preferentially absorbed by certain body
tissues, one of ordinary
skill in the art would have further recognized the importance of
performing diagnostic
testing that would be probative of the concentration of such a
non-uniformly
distributing drug in the drugs target tissues. (Ex. 1027 12223.)
See Tyco Healthcare
Group LP, 774 F.3d 968, 977 (Claims would have been obvious if
they are nothing
more than a combination of familiar elements that yield
predictable results.).
With respect to Claim 10, it would have been further obvious to
one of
ordinary skill in the art to include genetic testing in the
extensive diagnostic testing
taught by Mitchell and Dishman. (Ex. 1027 125.) Specifically, it
was common in the
art at the time of the 720 Patent to conduct genetic testing at
the same time as the
pregnancy testing taught in Mitchell. (Ex. 1027 124.) Similarly,
[b]ecause there is
frequently a genetic component in schizophreniathe ailment
treated in Dishman
one of ordinary skill in the art would have expected that the
extensive diagnostic
testing in Dishman would have included genetic testing. (Ex.1027
126.) More
generally, because genetic testing was a well-known diagnostic
procedure at the time
of the 720 Patent, it would have been obvious to one of ordinary
skill in the art to
include genetic testing in the diagnostic testing that preceded
such last-resort 30
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Patent No. 6,315,720
treatments as those disclosed in Mitchell and Dishman. (Ex. 1027
127.) See Unigene
Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir.
2011) (This court has
observed that teachings from prior art, suggestions beyond the
literal teachings of
those art references, or even motivations from the store of
common knowledge of
one of ordinary skill in the art field (TSM)flexibly viewed and
appliedprovide
the sources of evidence that an ordinary skilled artisan might
have found and
combined at the time of the invention.).
4. Dependent Claims 1114 and 2025 are obvious over the prior art
of Ground 1, and more specifically over Mitchell in view of the
knowledge of one of ordinary skill in the art.
Claims 1114, and 2125 depend from Claim 1, and merely add
limitations
already known in the field and obvious to one of ordinary skill
in the art. Claims 11,
12, and 13 respectively require that the drugs associated side
effect is likely to arise
in said patient, is likely to arise in a foetus carried by said
patient, and is likely to
arise in a recipient or a foetus carried by a recipient of the
bodily fluid of said patient,
while Claim 14 requires that the claim 12 recipient is a sexual
partner of said
patient. (Ex. 1001 at 19:19.) Claim 22 requires that the drug is
thalidomide. (Ex.
1001 at 19:3435.) Claim 21 requires that the drugs associated
side effect comprises
a teratogenic effect, while Claims 23 and 24 respectively
require that the Claim 21
teratogenic effect is likely to arise in a foetus carried by
said patient, and is likely to
arise in a foetus carried by a recipient of the bodily fluid of
said patient and Claim 25
requires that the Claim 24 recipient of the bodily fluid of said
patient is a sexual
31
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Patent No. 6,315,720
partner of said patient. (Ex. 1001 at 19:3233, 3642.) Claim 20
requires providing
said patient with a contraceptive device or formulation. (Ex.
1001 at 19:3031.)
Although Mitchell does not explicitly disclose that
isotretinoins side effects arise
in the patient taking the drug, Mitchell discloses that its
study relates to the drug
Accutane. (Ex. 1010 at 101.) One of ordinary skill in the art
would have known to
look to Accutanes publicly-available FDA-approved drug label
(included as a package
insert with any prescription of the drug) to determine whether
isotretinoins side
effects arise in the patient taking the drug. (Ex. 1027 132.)
The Accutane label prior
to the 720 Patents October 2000 filing stated in bold: WARNINGS:
Psychiatric
Disorders: Accutane may cause depression, psychosis and rarely,
suicidal ideation,
suicide attempts and suicide. (Ex. 1029 at 11.) Thus, [f]rom
Mitchells disclosure, it
would have been obvious to one of ordinary skill in the art that
isotretinoin side
effects arise in the patient taking the drugin the case of
psychiatric disordersand
also in a fetus carried by the patient taking the drugin the
case of teratogenicity,
satisfying Claims 11, 12, 21, 22 and 23. (Ex. 1010 at 101; Ex.
1027 134.)
By the time the 720 Patent was filed, it was well known to those
of ordinary
skill in the art that certain drugs, including
thalidomidedisclosed in Mitchell as a
drug that could potentially utilize Mitchells isotretinoin
regimecould be found in
semen, and thus could be transmitted to a sexual partner of a
male undergoing
treatment with the drug. (Ex. 1010 at 105; Ex. 1027 135.) For
example, by 1982,
Mann and Lutwak-Mann had discovered that: 32
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Patent No. 6,315,720
Thalidomide and tetracycline are drugs known to be strongly
absorbed
by spermatozoa. Experiments indicating that thalidomide
administered
to male rabbits adversely affects the pregnancy of females mated
to these
males, for the first time drew attention to the until then
unrecognized
eventuality of drug-induced pregnancy-wastage occurring by the
paternal
route. Subsequently, it was shown that when [14C]thalidomide
is
administered to male rabbits, the presence of the radioactive
label can be
demonstrated in the semen (collected within the artificial
vagina) within
a short time after ingestion, and is still detectable there some
12 days
later.
(Ex. 1018 at 78 (emphasis added).) Additionally, in 1997,
Vanchieri wrote that
[b]ecause of a recent study showing thalidomide in rabbit semen
and uncertainty
about its presence in human semen, both women and men receiving
the drug will be
required to use contraception. (Ex. 1019 at 1.) For this reason,
it was obvious to one
of ordinary skill in the art that a teratogenic drug, such as
thalidomide, was likely to
cause side effects either in a sexual partner of a male being
treated with the drug as in
Claims 14, 24, and 25, or in the fetus of this sexual partner as
in Claims 13 and 23.
(Ex. 1027 13738.) See Perfect Web Techs., Inc., 587 F.3d at 1328
(Common sense
has long been recognized to inform the analysis of obviousness
if explained with
sufficient reasoning.).
The teratogenic risks associated with isotretinoin had been well
known since
the 1980s, as Mitchell discusses at length. (Ex. 1010 at 101
(The concern about
human teratogenicity proved well founded reports of pregnancies
in exposed
33
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Patent No. 6,315,720
women continued to accumulate, and by 1989 approximately 78
malformed infants
had been reported.).) For this reason, those of ordinary skill
in the art at the time of
the 720 Patent readily recognized the importance of
contraception to patients taking
isotretinoin. (Ex. 1027 142.) This is why Mitchells
Pregnancy-Prevention Program
in Women of Childbearing Age Receiving Isotretinoin taught an
aggressive
program designed to reduce the risk of pregnancy among women
taking the drug
that included warnings about the need to have a negative blood
pregnancy test
before starting therapy; to wait until the next menstrual period
before starting therapy;
and to use effective birth control one month before starting
therapy, during therapy,
and one month after completing it. (Ex. 1010 at 101, 103.)
Mitchell further taught
providing an information brochure for patients, contraceptive
information,
information about and the necessary forms for a contraception
referral program (in
which the manufacturer would reimburse patients for a visit to
another physician for
contraceptive counseling). (Ex. 1010 at 101.) In light of
Mitchells teachings, it would
have been obvious to one of ordinary skill in the art that when
the patient
participates in the contraception referral program, that doctor
will likely provide the
patient with a contraceptive device or formulation as in Claim
20, in order to
accomplish Mitchells objective of ensuring that women of
childbearing age taking
isotretinoin use effective contraception. (Ex. 1010 at 102; 1027
145.) See Sciele
Pharma, Inc., 684 F.3d at 1259. See Sciele Pharma, Inc. v. Lupin
Ltd., 684 F.3d 1253, 1259
(Fed. Cir. 2012) (finding substantial question of validity
because, [i]f a person of 34
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Patent No. 6,315,720
ordinary skill can implement a predictable variation, 103 likely
bars its
patentability) (quoting KSR, 550 U.S. at 417).
5. Dependent Claim 15 is obvious over the prior art of Ground 1,
and more specifically over Mitchell in view of Dishman and in
further view of the knowledge of one of ordinary skill in the
art.
Claims 15 depends from Claim 1, and merely add limitations
already known in
the field and obvious to one of ordinary skill in the art. Claim
15 requires f. defining
for each said risk group a second set of information to be
collected from said patient
on a period basis; g. obtaining said second set of information
from said patient; and h.
entering said second set of information in said medium before
said patient is
approved to receive said drug. (Ex. 1001 at 19:1018.)
Both Mitchell and Dishman explicitly disclose defining
information to be
collected and obtaining that information from the patient on a
periodic basis as in
Claim 15(f) and (g). For example, Mitchell discloses that:
Each week, 100 women were randomly assigned to the group
interviewed by telephone. They were contacted three times: at
the start
of therapy (within one month after enrollment), when we inquired
about
the patients understanding of the hazards of isotretinoin
and
compliance with the program; in the middle of therapy (between
two
and four months after the start of the isotretinoin), when we
inquired
about continued understanding of the hazards of isotretinoin
and
compliance with the program; and six months after the completion
of
therapy, when we asked about the occurrence of pregnancy during
or
after treatment.
35
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Patent No. 6,315,720
(Ex. 1010 at 102.) In addition, Mitchell teaches that:
Women not randomly assigned to the telephone group were sent a
brief
questionnaire six months after starting isotretinoin to
determine the date
on which they had completed or were expected to complete
therapy.
They were then mailed a questionnaire six months after that
date, which
included the same questions as the third telephone
interview.
(Ex. 1010 at 102.) Mitchell further teaches that, [t]o minimize
memory loss and biased
recall, we collected information on the behavior of physicians
and patients at the start
of therapy as well as during treatment. (Ex. 1010 at 102.)
Additionally, Dishman
teaches that [t]he manufacturer, Sandoz, requires all
prescribers and patients to be
registered with the Clozaril National Registry, which requires
weekly monitoring of
each patients white blood cell (WBC) count and limits medication
dispensing to a
one-week supply. (Ex. 1007 at 899.)
Dishman further discloses that [p]hysicians at the NCCC review
each clozapine
candidates file before granting approval for use and review
weekly tracking sheets
that report patient status. [T]he pharmacist ensures that the
psychiatry resident
orders the necessary laboratory tests, performs the required
clinical evaluation, and
documents the results in a weekly tracking sheet, which the
pharmacist forwards to
the NCCC. (Ex. 1007 at 900 (emphasis added).) As previously
discussed above with
respect to the second portion of Claim 1(c)Dishman discloses the
storage of the
patients weekly WBC count (and other collected information
contained in the weekly
tracking sheet) on a computer readable storage medium. (See Ex.
1007 at 899.)
36
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Patent No. 6,315,720
Because Dishman also teaches that this weekly review occurs
before granting approval
for use, and that its lockout system will allow clozapine
prescriptions to be
processed only when WBC counts are within the defined limits, it
would have been
obvious to one of ordinary skill in the art that the weekly WBC
test results must be
entered in the medium before said patient is approved to receive
said drug, as
required by Claim 15(h). (Ex. 1007 at 900; Ex. 1027 15354.) See
Perfect Web Techs.,
Inc., 587 F.3d at 1328.
6. Dependent Claims 1617 are obvious over the prior art of
Ground 1, and more specifically over Mitchell in view of Dishman
and in further view of the knowledge of one of ordinary skill in
the art.
Claims 1617 depend from Claim 1, and merely add limitations
already known
in the field and obvious to one of ordinary skill in the art.
Claim 16 requires that the
Claim 15 second set of information collected on a periodic basis
comprises a survey
regarding said patients behavior and compliance with said risk
avoidance measures,
while Claim 17 requires that the Claim 16 survey is conducted
telephonically using
an integrated voice response system. (Ex. 1001 at 19:1924.)
Mitchell explicitly discloses Claim 16s requirement of a survey
regarding said
patients behavior and compliance with said risk avoidance
measures. For example,
Mitchells authors designed and conducted a survey to assess the
compliance of
physicians and patients with the program and to identify the
rate of pregnancy during
treatment with isotretinoin and during the month after
treatment. (Ex. 1010 at 101
02.) Early in 1992, the questionnaire was modified to allow more
complete
37
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Patent No. 6,315,720
information to be obtained regarding sexual activity and birth
control. (Ex. 1010 at
103.) Mitchell further discloses that, [a]mong women enrolled in
this survey,
understanding of the teratogenic risks of isotretinoin and of
the need to avoid
pregnancy was virtually universal. Compliance with other aspects
of the program was
less complete, although in no case did compliance for any
measure decline during the
study period. (Ex. 1010 at 104.)
Further, because one method of conducting the surveys in
Mitchell was by
telephone, using an integrated voice response systemwhich was
well known to
those of ordinary skill in the art at the timeas required by
Claim 17, would have
been obvious to one of ordinary skill in the art. (Ex. 1027
158-61; see, e.g., Ex. 1017
at 61112, 623.) See In re Venner, 262 F.2d 91, 95 (C.C.P.A.
1958) (Furthermore, it is
well settled that it is not invention to broadly provide a
mechanical or automatic
means to replace manual activity which has accomplished the same
result.).
7. Dependent Claims 1819 and 2627 are obvious over the prior art
of Ground 1, and more specifically over Mitchell in view of Dishman
and in further view of the knowledge of one of ordinary skill in
the art.
Claims 1819 and 2627 depend from Claim 1, and merely add
limitations
already known in the field and obvious to one of ordinary skill
in the art. Claim 18
requires that, where the patient is a female of childbearing
potential, the Claim 15
second set of information collected on a periodic basis
comprises the results of a
pregnancy test, while Claim 19 requires that the periodic
interval for the Claim 18
38
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Patent No. 6,315,720
pregnancy test comprises about 28 days. (Ex. 1001 at 19:2529.)
Claim 26 similarly
requires that, where the drug has a teratogenic effect, the
information to be obtained
from said patient includes the results of a pregnancy test,
while Claim 27 adds to
the requirements of Claim 26 that said prescription is filled
for no more than about
28 days. (Ex. 1001 at 19:4320:2.)
Mitchell explicitly discloses that, in light of isotretinoins
teratogenicity,
women were warn[ed] about the need to have a negative blood
pregnancy test before
starting therapy and that 78 percent [of women] were told to
wait for pregnancy-
test results before starting isotretinoin as Claim 26 requires.
(Ex. 1010 at 101
03.)
Mitchell further teaches obtaining periodic pregnancy test
results from women
of childbearing age after isotretinoin treatment has begun: To
identify compliance
with the program and the occurrence of pregnancy, the survey
covered the treatment
period and the subsequent six months, a period long enough to
allow identification of
pregnancies occurring as late as the first month after
discontinuation of treatment.
(Ex. 1010 at 102 (emphasis added).) Mitchell also discloses that
six months after the
completion of therapy, [the authors] asked about the occurrence
of pregnancy during
or after treatment, and learned that there were 402 pregnancies
during therapy.
(Ex. 1010 at 10102.) Dishman similarly teaches that,
contraindications to clozapine
therapy include pregnancy, and so it would have been obvious to
one of ordinary
39
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Patent No. 6,315,720
skill in the art to also require a mid-treatment pregnancy test
for Dishmans clozapine
patients upon a missed period. (Ex. 1007 at 900; Ex. 1027
167.)
Although neither reference teaches requiring periodic pregnancy
tests before
prescribing the next cycle of drugs, Dishman does teach
requiring WBC tests every
week before prescribing the next week of drugs, as discussed
above with respect to
Claim 15(h). (Ex. 1007 at 899 (The manufacturer, Sandoz,
requires all prescribers
and patients to be registered with the Clozaril National
Registry, which requires
weekly monitoring of each patients white blood cell (WBC) count
and limits
medication dispensing to a one-week supply.).) In light of
Mitchell s requirement for
excluding pregnancy by a negative blood pregnancy before
starting therapy it would
have been obvious to one of ordinary skill in the art to apply
Mitchells pregnancy test
requirement to Dishmans periodic testing before prescription
requirement, satisfying
Claim 18. (Ex. 1010 at 103; Ex. 1027 169.) See KSR Intl Co., 550
U.S. at 417.
Although Dishmans system requires testing every 7 days, and
correspondingly
only allows patients to fill 7-day supply prescriptions, it was
well known to one of
ordinary skill in the art that women may only become pregnant
once during every 28-
day menstrual cycle. In light of this fact, when implementing
Dishmans periodic
testing requirement to pregnancy testing, it would have been
obvious to one of
ordinary skill in the art that the proper testing period for
pregnancy is about 28 days,
as Claim 19 requires. (Ex. 1027 170.) See Sciele Pharma, Inc.,
684 F.3d at 1259.
Further, applying Dishmans one-to-one correspondence between
testing intervals 40
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Patent No. 6,315,720
and prescription supplies, it would consequently have been
obvious to one of
ordinary skill in the art to fill prescriptions for no more than
about 28 days, as in
Claim 27. (Ex. 1027 171.) See KSR Intl Co., 550 U.S. at 417
([I]f a technique has
been used to improve one device, and an ordinarily skilled
artisan would recognize
that it would improve similar devices in the same way, using the
technique is obvious
unless its actual application is beyond his or her skill.).
8. The added limitations of independent Claim 28 and dependent
Claims 2932 are obvious over Mitchell in view of Dishman and in
further view of Cunningham and knowledge of one of ordinary skill
in the art.
Claim 28, although an independent claim, merely repeats the
language of Claim
1 with a single added limitation already known in the field and
obvious to one of
ordinary skill in the art. Claims 2932 depend from Claim 28, and
similarly add
limitations already known in the field and obvious to one of
ordinary skill in the art.
Claim 28(a)(e) maps precisely to Claim 1(a)(e), and so is
obvious for the
reasons explained above with respect to Claim 1(a)(e). In
addition, Claim 28 requires
that said adverse side effect is likely to arise in patients who
take said drug in
combination with at least one other drug. (Ex. 1001 at 20:331.)
Claims 29 and 30
respectively require that the information to be obtained from
said patient is also
probative of the likelihood that said patient may take said drug
and said other drug in
combination, and includes the results of diagnostic testing,
while Claims 31 and
32 respectively require that the Claim 30 diagnostic testing
comprises testing for
41
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Patent No. 6,315,720
evidence of the use of said other drug and comprises testing for
evidence which is
indicative of the onset of said adverse event. (Ex. 1001 at
20:3242.)
It would have been obvious to one of ordinary skill in the art
that the adverse
effects described in Mitchell and Dishmanteratogenicity and
agranulocytosis
would have also been likely to arise in patients who take said
drug in combination
with at least one other drug, as required by Claim 28. (Ex. 1010
at 101; Ex. 1007 at
899; Ex. 1027 175.) See Perfect Web Techs., Inc., 587 F.3d at
1328.
As previously discussed with respect to Claims 7 and 8, both
Mitchell and
Dishman disclose extensive diagnostic testing, including testing
indicative of the onset
of said adverse side effect, prior to treatment. Thus, both
Mitchell and Dishman teach
the limitations of Claims 30 and 32. Specifically, Mitchell
teaches the need to have a
negative blood pregnancy test before starting therapy because of
the drugs
teratogenic risk. (Ex. 1010 at 103, 105.) Additionally, Dishman
discloses that [t