SUMITOMO DAINIPPON PHARMA CO., LTD., SUNOVION PHARMACEUTICALS INC., Plaintiffs-Appellees
EMCURE PHARMACEUTICALS LIMITED, HERITAGE PHARMA LABS INC., FKA EMCURE PHARMACEUTICALS USA INC., INVAGEN PHARMACEUTICALS, INC., TEVA PHARMACEUTICALS USA, INC., TEVA PHARMACEUTICAL INDUSTRIES, LTD., Defendants-Appellants
Appeals from the United States District Court for the
District of New Jersey in Nos. 2:15-cv-00280-SRC-CLW,
2:15-cv-00281-SRC-CLW, 2:15-cv-06401-SRC-CLW, Judge Stanley
Preston K. Ratliff, II, Paul Hastings LLP, New York, NY,
argued for plaintiffs-appellees. Also represented by Joseph
M. O'Malley, Jr.; Stephen Blake Kinnaird, Washington, DC;
William Charles Baton, Charles M. Lizza, Saul Ewing Arnstein
& Lehr LLP, Newark, NJ.
Christopher K. Hu, Blank Rome LLP, New York, NY, argued for
all defendants-appellants. Defendants-appellants Emcure
Pharmaceuticals Limited, Heritage Pharma Labs Inc. also
represented by Jay Philip Lessler; David C. Kistler,
S. Silver, Caesar, Rivise, Bernstein, Cohen & Pokotilow,
Ltd., Philadelphia, PA, for defendant-appellant Invagen
Pharmaceuticals, Inc. Also represented by Salvatore
Guerriero, Pei-Ru Wey.
Levy, Goodwin Procter LLP, New York, NY, for
defendants-appellants Teva Pharmaceuticals USA, Inc., Teva
Pharmaceutical Industries, Ltd. Also represented by Linnea P.
Cipriano, Cynthia Lambert Hardman; William M. Jay,
Washington, DC; David Zimmer, Boston, MA; Brian Joseph Prew,
Greenberg Traurig, LLP, New York, NY.
Moore, Mayer, and Stoll, Circuit Judges.
Hatch-Waxman appeal requires us to construe the scope of a
claim depicting a compound's chemical structure. Although
the compound can exist in two different three-dimensional
orientations that are mirror images of each other, only one
is portrayed in the claim. The district court construed the
claim to cover the two three-dimensional orientations in
isolation-both the one shown in the claim and its mirror
image-as well as mixtures of the two in any ratio. The
parties then stipulated to infringement and the entry of an
injunction. We agree that, at a minimum, the claim
encompasses the specific orientation depicted. Because this
orientation is the active pharmaceutical ingredient in each
party's commercial product, we need not determine what
else falls within the claim's ambit to resolve the
present dispute. We affirm.
is the study of a molecule's three-dimensional structure.
Stereoisomers are molecules with the same chemical formula
and structure but different three-dimensional configurations.
If two stereoisomers are non-superimposable mirror images of
one another, they are called enantiomers. Compounds with
chiral centers-a carbon atom bonded to four non-identical
atoms or groups of atoms-provide common examples of compounds
with enantiomers. Although enantiomers often have identical
physical properties, such as density and boiling point, they
can exhibit different pharmacological properties in the human
drawing enantiomers, chemists use wedges and dashes to
indicate the three-dimensional structure. A wedge designates
a bond coming out of the plane of the paper towards the
reader, a dashed line represents a bond extending behind the
plane of the paper, and normal lines signify bonds in the
same plane as the paper. A simple example of two enantiomers
is shown below:
1010. The two molecules are enantiomers because they cannot
be made identical to one another without breaking and
rearranging the chemical bonds. If the molecule on the right
is rotated to align atoms "1" and "2"
with the molecule on the left, atoms "3" and
"4" are in the reverse position.
often characterize enantiomers as "()" or
"(-)" based on their optical activity-the ability
of a solution containing one enantiomer to rotate polarized
light. A solution of the ()-enantiomer rotates the plane of
polarized light in a clockwise direction, and a solution of
the (-)-enantiomer ...