Sawai USA, Inc.v.Nissan Chemical Industries Ltd.

Patent Trial and Appeal Board

Feb 4, 2016

07883398 (P.T.A.B. Feb. 4, 2016)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: February 4, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SAWAI USA, INC. AND SAWAI PHARMACEUTICAL CO., LTD.,
Petitioners,

v.

NISSAN CHEMICAL INDUSTRIES LTD.,
Patent Owner.
____________

Cases IPR2015-01647
Patent No. 5,856,336 B2
_______________

Before JACQUELINE WRIGHT BONILLA, SHERIDAN K. SNEDDEN,
and TINA E. HULSE, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Sawai USA Inc. and Sawai Pharmaceutical Co., Ltd. (“Petitioner”)
filed a Petition to institute an inter partes review of claims 1 and 2 (Paper 1,
“Pet.”) of U.S. Patent No. 5,856,336 B2 (Ex. 1001, “the ’336 patent”).
Nissan Chemical Industries, Ltd. (“Patent Owner”) filed a Patent Owner
Preliminary Response. Paper 8 (“Prelim. Resp.”).
Upon consideration of the Petition and Patent Owner Preliminary
Response, we conclude that Petitioner has not established that there is a
reasonable likelihood that it will prevail with respect to at least one of the
challenged claims. For the reasons that follow, we do not institute an inter
partes review.
A. Related Proceedings
The parties inform us of no related litigation between them involving
the ’336 patent. Pet. 56; Paper 4. Concurrent with the filing of the present
Petition, Petitioner also filed a different Petition requesting inter partes
review of claims 12 of the ’336 patent (IPR2015-01648).
B. The ’336 patent (Ex. 1001)
The ’336 patent discloses mevalonolactone derivatives having a
quinoline ring and their use as a pharmaceutical for reducing hyperlipidemia,
hyperlipoproteinemia, or atherosclerosis. Ex. 1001, 1:635. The
compounds are active against the enzyme HMG-CoA (or 3-hydroxy-3-
methylglutaryl-coenzyme A). Id. at Abstract.

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C. Challenged claims
Challenged claims 1 and 2 are reproduced below:

1. A compound of the formula,

Z= —CH(OH)—CH2—CH(OH) —CH2—COO. ½Ca.

2. A method for reducing hyperlipidemia, hyperlipoproteinemia
or atherosclerosis, which comprises administering an effective
amount of the compound of formula A as defined in claim 1.

Ex. 1001, 32:2040.
D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1 and 2 of the ’336 patent on the
following ground. Pet. 20–57.
References Basis Claim[s] challenged
Picard1 and Kesseler2 § 103(a) 1 and 2

1 Joseph A. Picard et al., U.S. Patent No. 4,761,419, issued Aug. 2, 1988.
Ex. 1009 (“Picard”).

2 Kurt Kesseler et al., U.S. Patent No. 4,925,852, issued May 15, 1990.
Ex. 1010 (“Kesseler”).
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Petitioner relies also on the Declaration of Dr. Milton Brown in
support of the proposed ground of unpatentability. Ex. 1012 (“Brown
Declaration” or “Brown Decl.”).
II. ANALYSIS
A. Claim Interpretation
We interpret claims using the “broadest reasonable construction in
light of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs., LLC, 793 F.3d
1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed
Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446).
Under the broadest reasonable construction standard, claim terms are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art at the time of the invention. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Absent claim language
carrying a narrow meaning, the PTO should only limit the claim based on
the specification . . . when [it] expressly disclaim[s] the broader definition.”
In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 2004). “Although an inventor is
indeed free to define the specific terms used to describe his or her invention,
this must be done with reasonable clarity, deliberateness, and precision.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We determine that no explicit construction of any specific claim term
is necessary to determine whether to institute a trial in this case. See, e.g.,
Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
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(“[C]laim terms need only be construed ‘to the extent necessary to resolve
the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage of the proceeding, we
have not made a final determination as to the construction of any claim term.
B. Effective Filing Date of Claims 1 and 2 of the ʼ336 Patent
The ʼ336 Patent claims the benefit of Japanese Patent Applications JP
63-193606 (“JP ’606,” filed August 3, 1988),3 JP 63-15585 (“JP ’585,” filed
January 26, 1988),4 and JP 62-207224 (“JP ’224,” filed August 20, 1987).5
Petitioner contends that neither JP ʼ585 nor JP ʼ224 provides written
description for a ½ calcium salt, as specifically required by claims 1 and 2 of
the ʼ336 patent. Pet. 1015. Thus, Petitioner contends that the earliest
effective filing date for the ʼ336 Patent is no earlier than the filing date of JP
’606, or August 3, 1988. Id.
In its Preliminary Response, Patent Owner does not direct us to any
portion of either JP ʼ585 or JP ʼ224 that provides written description for a ½
calcium salt, instead arguing that the Board need not address priority at this
time in light of the deficiencies in Petitioner’s arguments. Prelim. Resp. 2
n.1. For the purposes of this Decision, we treat Picard and Kesseler as prior
art references and consider the patentability challenge set forth in the
Petition.

3 Certified English translation provided as Ex. 1013.
4 Certified English translation provided as Ex. 1014.
5 Certified English translation provided as Ex. 1015.
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C. Petitioner’s Asserted Obviousness Ground
1. Petitioner’s Contentions
Petitioner contends that claims 1 and 2 of the ’336 patent are obvious
over the combination of Picard and Kesseler. Pet. 2539. Petitioner
contends that a person of ordinary skill in the art would have selected
Picard’s Example 3 compound (Ex. 1009, 17:4966) as a lead compound
and would have found it obvious to change the R2 isopropyl group to a
cyclopropyl group in order to achieve the compound of claim 1 of the ’336
patent. Pet. 2630.
In support of this contention, Petitioner directs us to the following
teachings of Picard. Id. Picard discloses purported compound inhibitors of
3-hydroxy-3-methylglutaryl-coenzyme A reductase (HMG-CoA reductase)
having the structure of the following Formula I (“Picard Formula I”):

and X is —CH2CH2— or —CH═CH—. Ex. 1009, Abstract, 2:629. With
regard to R1, R2, R3, R4, R5, and R6, Picard discloses as follows:
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R1 and R2 are independently hydrogen; alkyl of from one
to six carbons; trifluoromethyl; cyclopropyl; cyclohexyl;
cyclohexylmethyl; phenyl; phenyl substituted with fluorine,
chlorine, bromine, hydroxy, trifluoromethyl, alkyl of from one to
four carbon atoms, or alkoxy of from one to four carbon atoms;
phenylmethyl; phenylmethyl substituted with fluorine, chlorine,
bromine, hydroxy, trifluoromethyl, alkyl of from one to four
carbon atoms, or alkoxy of from one to four carbon atoms; 2-, 3-
, or 4-pyridinyl; or 2-, -, or 5-pyrimidinyl; provided that when X
is in the 2-position, R1 is hydrogen and is attached in the 4-
position.
R3, R4, R5, and R6 are independently selected from
hydrogen; alkyl of from one to six carbon atoms; trifluoromethyl;
cyclopropyl; fluorine; chlorine; bromine; hydroxy; alkoxy of
from one to four carbon atoms; cyano; nitro; amino; acetylamino;
aminomethyl; phenyl; phenyl substituted with fluorine, chlorine,
bromine, hydroxy, trifluoromethyl, alkyl of from one to four
carbon atoms, or alkoxy of from one to four carbon atoms;
phenylmethyl; or phenylmethyl substituted with fluorine,
chlorine, bromine, hydroxy, trifluoromethyl, or alkyl of from one
to four carbon atoms.
Id. at 2:3053.
Picard also discloses compound inhibitors of HMG-CoA reductase
having the structure of the following Formula II (“Picard Formula II”):
,
where X, R1, R2, R3, R4, R5, and R6 are as defined above. Id. at 2:5867.
Table 1 of Picard (“Picard Table 1”), reproduced below, discloses the
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activities of two compounds encompassed by Formula I. Id. at 11:2541.

Example 3 describes the preparation of a compound according to
Formula II (“Picard Example 3 Compound”): Id. at 17:4966. Petitioner
provides a comparison of the structure of Picard’s Example 3 compound and
the claimed compound, reproduced in the table below. Pet. at 28.

With reference to the above table, Petitioner contends that Picard Example 3
Compound differs from a compound of claim 1 by the presence of an
isopropyl at the R2 position, instead of a cyclopropyl group. Id.
Petitioner further contends that the data provided in Picard Table 1
describes preferred lactones in which R1 is 4-fluorophenyl and R2 is methyl
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or isopropyl. Pet. 27 (citing Brown Decl. ¶ 32). According to Petitioner,
Picard indicates in Table 1 that a R2 isopropyl substituted compound is
about 10 times more potent than its methyl-substituted counterpart. Pet. 27.
Based on that data, according to Petitioner, a person of ordinary skill in the
art would have reasonably expected “that derivatives having an isopropyl
group would be more active than those having a methyl group.” Pet. 27, 30
(citing Brown Decl. ¶¶ 32, 37.)
Petitioner further contends that Picard discloses “that cyclopropyl is a
preferred alternate propyl group at this position, a POSA would naturally
have prepared cyclopropyl as the next isomeric propyl alternative.” Id. at 30
(citing Brown Decl. ¶ 38).
Petitioner further contends that “Kesseler (Ex. 1010) expressly
teaches that a cyclopropyl group is preferred to an isopropyl group at the R2
position.” Id. at 3031 (citing Brown Decl. ¶ 40). With reference to the
table reproduced below, Petitioner directs our attention to compounds Ie and
Iac disclosed by Kesseler. Id. at 31; Ex. 1010, 14:2047. According to
Petitioner, “Kesseler . . . discloses that changing isopropyl to cyclopropyl in
the R2 position (circled) results in a nearly threefold increase in the IC50
values.” Pet. 31 (citing Brown Decl. ¶ 41-42).
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Petitioner concludes as follows:
In view of the clear structural similarity between these
compounds, a POSA would have understood that each was
described as an active HMG-CoA reductase inhibitor, and would
have considered Kesseler’s ring-cracked compounds (i.e., those
of formulae I and II in Kesseler) to be “analogs” of the ring-fused
structure of compactin.
Accordingly, a POSA would have expected that the activity of
the compound of Picard Example 3 would have been improved
by the similar substitution of a cyclopropyl for its isopropyl
group.
Pet. 36 (citations omitted); Brown Decl. ¶¶ 4648, 5152.
2. Patent Owner’s Contentions
Patent Owner contends that the evidence presented by Petitioner
shows that there were many potentially beneficial compounds disclosed in
the prior art. Prelim. Resp., 1425 (citing Pet. 15, 1718; Brown Decl. ¶ 25
n.1; Ex. 1009, 11:3940 (Table 1); Ex. 1010, 1:3554, 14:2445). Patent
Owner further contends that Petitioner’s rationale fails to establish why the
Picard Example 3 Compound would have been an obvious choice of a “lead
compound” for an HMGCoA reductase inhibitor and thus “is the epitome of
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impermissible hindsight reconstruction.” Id. at 14.
Patent Owner contends that Picard only provides functional activity
data for the compounds provided in Picard Table 1, which does not include
the compound disclosed in Example 3 of Picard. Id. at 1718 (citing Ex.
1009, col. 11 (Table 1)). Patent Owner argues that the Petitioner fails to
provide a sufficient reason for why a person of ordinary skill in the art
would “jump to the conclusion that the compound of Example 3 (for which
not a shred of in vitro data is provided) would be a better inhibitor of HMG-
CoA reductase than the 4-chloro compounds disclosed in Table 1 (for which
in vitro data is provided).” Id. at 20.
With regard to Kesseler, Patent Owner contends that Kesseler
discloses “an entire class of non-quinoline compounds . . . with better
activity against HMG-CoA reductase than anything disclosed in Picard.” Id.
at 24. According to Patent Owner, Kesseler discloses at least 14 compounds
having IC50 values against HMG-CoA reductase between 0.95.0
nanomolar, whereas the IC50 values disclosed in Picard were between 32 and
350 nanomolar. Id. (citing Ex. 1010, 14:2445; Ex. 1009, 11 (Table 1)).
Patent Owner further contends Petitioner fails to provide a sufficient
rationale as to why a person of ordinary skill in the art would have equated
results from the pyridine and pyrimidine cores of Kesseler to the quinoline
cores of Picard. Id. at 3437.
3. Analysis
We generally follow a two-part inquiry to determine whether a new
chemical compound would have been obvious over particular prior art
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compounds. Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1291–93
(Fed. Cir. 2012). First, we determine “whether a chemist of ordinary skill
would have selected the asserted prior art compounds as lead compounds, or
starting points, for further development efforts.” Id. at 1291. Second, we
analyze whether there was a reason to modify a lead compound to make the
claimed compound with a reasonable expectation of success. Id. at 1292.
A lead compound is defined as “‘a compound in the prior art that
would be most promising to modify in order to improve upon its . . . activity
and obtain a compound with better activity.”’ Id. at 1291 (citing Takeda
Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir.
2007)). Stated another way, “a lead compound is ‘a natural choice for
further development efforts.”’ Id. (citing Altana Pharma AG v. Teva Pharm.
USA, Inc., 566 F.3d 999, 1008 (Fed. Cir. 2009)). The analysis of whether a
chemist of ordinary skill would have chosen the prior art compound as a lead
compound “is guided by evidence of the compound’s pertinent properties”
including “positive attributes such as activity and potency,” “adverse effects
such as toxicity,” “and other relevant characteristics in evidence.” Id. at
1292.
Importantly, “[a]bsent a reason or motivation based on such prior art
evidence, mere structural similarity between a prior art compound and the
claimed compound does not inform the lead compound selection.” Id.; see
also Daiichi Sankyo Co., Ltd. v. Matrix Laboratories, Ltd., 619 F.3d 1346,
1354 (“[P]roving a reason to select a compound as a lead compound depends
on more than just structural similarity, but also knowledge in the art of the
functional properties and limitations of the prior art compounds”).
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Establishing that a chemical compound would have been obvious over a
structurally similar compound requires “a showing that the ‘prior art would
have suggested making the specific molecular modifications necessary to
achieve the claimed invention.’” Takeda Chem. Indus., Ltd. v. Alphapharm
Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (internal quotations
omitted).
In the present case, Petitioner identifies the Picard Example 3
Compound as a “lead compound” and then proceeds to walk us through the
steps a person of ordinary skill in the art would have had to perform in order
to arrive at the compound of the claims. Pet. 26–36. These steps involve
concluding from the data provided in Picard Table 1 that an isopropyl group
at position R2 of Picard Formula I is important for improved compound
activity (i.e., IC50). As the Picard Example 3 Compound is not a compound
according to Picard Formula I, a person of ordinary skill in the art would
have had to predict that this improved activity, attributed to the R2
substituent, would have also been exhibited by a compound according to
Picard Formula II having an isopropyl group at the R2 position. A person of
ordinary skill in the art would then have replaced the isopropyl at the R2
position of the Picard Example 3 Compound with a cyclopropyl group to
achieve the compound of the challenged claims. Petitioner reasons that
Kesseler would have informed a person of ordinary skill in the art that such
a change would improve the activity of the compound based on a
comparison of Kesseler’s Ie and Iac compounds. Pet. 31 (citing Brown
Decl. ¶¶ 41–42).
We are not persuaded that Petitioner has established that a person of
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ordinary skill in the art would have been motivated to perform the necessary
modifications to the Picard Example 3 Compound in order to achieve the
claimed compound. We note that Picard does not disclose any biological or
pharmacokinetic data for the Picard Example 3 Compound, and as such,
provides no suggestion that this compound has any particular functional
activity to suggest that the compound should serve as a lead compound.
Rather, the data disclosed in Picard relates to compounds according to
Picard Formula I (Ex. 1009, 11:3940 (Table 1)), which differs significantly
from the Example 3 compound, a compound of Picard Formula II.
Petitioner’s asserted obviousness ground is based primarily on the
structural similarity of the Example 3 compound and the compound of the
challenged claims. As stated in Otsuka, structural similarities alone are not
enough to inform the lead compound selection. 678 F.3d at 1292.
Accordingly, we determine that Petitioner has not provided sufficient reason
to show that it would have been obvious to select the Picard Example 3
Compound from the genus of compounds disclosed in Picard.
Moreover, even assuming one would have started with Picard
Example 3 Compound (based on its disclosure as an example compound),
Petitioner does not persuade us sufficiently that an ordinary artisan would
have had reason to substitute the isopropyl at the R2 position in particular in
that compound with a cyclopropyl group. Table 1 in Picard, which relates to
entirely different compounds, does not disclose a cyclopropyl group at that
position. Consequently, Petitioner necessarily relies on Kesseler in its
reasoning for the substitution—a reference that also discloses a number of
entirely different compounds. Petitioner does not explain adequately why
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one would have chosen this particular substitution in relation to Picard
Example 3 Compound in particular, in view of the large number of possible
substitution options when considering the different compounds disclosed in
Kesseler and Table 1 of Picard.
D. Interference Estoppel
Petitioner contends that “[t]he grandparent application of the ’336
patent was involved in two interferences,” both of which the Patent Owner
lost. Pet. 41 (citing Ex. 1005 and Ex. 1006). Petitioner attempts to use
arguments made in those interferences to support arguments that the Patent
Owner disclaimed or otherwise lost the right to claim the compound of
claims 1 and 2 of the ’336 patent. Id. at 4160. It thus appears that
Petitioner is attempting to rely on estoppel based on prior judgments in the
above-mentioned interferences (Ex. 1005 and Ex. 1006), not on asserted
unpatentability under 35 U.S.C. §§ 102, 103 based on prior art.
Under 35 U.S.C. § 311(b), a petitioner in an inter partes review “may
request to cancel as unpatentable 1 or more claims of a patent only on a
ground that could be raised under section 102 or 103 and only on the basis of
prior art consisting of patents or printed publications.” Petitioner has not
directed us to any authority that allows this Board to cancel claims in an
inter partes review based on arguments by a Petitioner that the Patent Owner
may have disclaimed the subject matter of challenged claims in a related
grandparent application, which is the relief requested by Petitioner (see Pet.
4160).
The ’336 patent itself was not involved in the two interference cases
cited by Petitioner. Pet. 41–42. Nonetheless, Petitioner relies on alleged
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“estoppel” based on judgments in those interferences, and specifically
Petitioner’s assertion that certain claims at issue in those cases recite subject
matter that “is not patentably distinct” from the subject matter recited in the
challenged claims. Pet. 46, 48. Thus, Petitioner does not assert
unpatentability under 35 U.S.C. §§ 102, 103 based on prior art. See also
W. L. Gore & Associates, Inc. v. LifePort Sciences LLC, Case IPR2014-
01319, Paper 7, slip op. at 14–15 (PTAB Feb. 23, 2015) (addressing a
similar type of argument regarding asserted “interference estoppel”).
Accordingly, we do not institute an inter partes review based on the alleged
interference estoppel asserted by Petitioner.
III. CONCLUSION
Petitioner does not persuade us that there is a reasonable likelihood
that at least one of the challenged claims is unpatentable based on the
asserted ground. We deny the petition for inter partes review and decline to
institute trial on the asserted ground as to any of the challenged claims.
IV. ORDER
In consideration of the foregoing, it is hereby ORDERED that the
petition is denied as to all challenged claims and no trial is instituted.
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PETITIONER:
Kenneth Burchfiel
kburchfiel@sughrue.com

Travis Ribar
tribar@sughrue.com

Chid Iyer
ciyer@sughrue.com

Michael Dzwonczyk
mdzwonczyk@sughrue.com

Azy Kokabi
akokabi@sughrue.com

PATENT OWNER:
David Conlin
dgconlin@mintz.com

Kathleen Carr
KBCarr@mintz.com

David Cotta
DCotta@mintz.com

Peter Cuomo
PJCuomo@mintz.com