Takeaway: If a prior art patent lists hundreds of compounds, then a petitioner must provide evidence for why one of ordinary skill in the art would have looked to a single compound to develop into the patented invention. 

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’336 Patent. The ’336 Patent is directed to a genus of tachykinin receptor antagonists useful in treating inflammatory diseases, pain or migraine, asthma, and emesis.

The Board began with claim construction and found that, for the purposes of this Decision, none of the terms requires express construction.

The Board then discussed the first ground of unpatentability – obviousness over Dorn ’699 and Murdock ’082. Petitioner alleged that it would have been obvious for one of ordinary skill in the art to select the parent compound of fosaprepitant, disclosed in Dorn ’699, to prepare a prodrug for intravenous administration, and to look to Murdock ’082 to modify the parent compound to arrive at the claimed invention. The Board discussed the two-part test regarding whether a new chemical compound would have been obvious over particular prior art compounds found in Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1291-93 (Fed. Cir. 2012). The Board agreed with Patent Owner that, given the content and scope of the prior art, one of ordinary skill would not have looked to Dorn ’699 to develop tachykinin receptor antagonists and would not have picked compound 96 from the hundreds of compounds listed therein. Patent Owner cited several research articles and patent literature in support of its contentions. The Board also found that Petitioner did not explain sufficiently why a skilled artisan would have picked compound 96 for further development.

As to the remaining grounds of unpatentability, the Board found that they all rely on Dorn ’699 for selecting compound 96 as the lead compound. Therefore, those challenges also fail.

Apotex Inc. v. Merck Sharp & Dohme Corp., IPR2015-00419
Paper 14: Decision Denying Institution of Inter Partes Review
Dated: June 25, 2015
Patent 5,691,336
Before: Lora M. Green, Zhenyu Yang, and Robert A. Pollock
Written by: Yang