PTX Opening Brief

Case: 18-2361 Document: 26 Page: 1 Filed: 11/09/2018
2018-2361
United States Court of Appeals

for the Federal Circuit
PERNIX IRELAND PAIN DAC, PERNIX THERAPEUTICS, LLC,
Plaintiffs-Appellants,
– v. –
ALVOGEN MALTA OPERATIONS LTD.,
Defendant-Appellee.
On Appeal from the United States District Court for the

District of Delaware in Case No. 1:16-cv-00139-WCB
Honorable William C. Bryson, Circuit Judge
BRIEF FOR PLAINTIFFS-APPELLANTS
DOMINICK A. CONDE
CHRISTOPHER P. BORELLO
BRENDAN M. O’MALLEY
JOSHUA D. CALABRO
ZACHARY L. GARRETT
VENABLE LLP
1290 Avenue of the Americas
New York, New York 10104
(212) 218-2100
dconde@venable.com
cborello@venable.com
bomalley@venable.com
jdcalabro@venable.com
zgarrett@venable.com
Attorneys for Plaintiffs-Appellants
NOVEMBER 9, 2018
COUNSEL PRESS, LLC (888) 277-3259
CERTIFICATE OF INTEREST
Counsel for Plaintiff-Appellants Pernix Ireland Pain DAC and Pernix
Therapeutics, LLC certifies the following:
1. The full name of every party or amicus represented by me is: Pernix
Ireland Pain DAC and Pernix Therapeutics, LLC.
2. The real parties in interest are: Pernix Ireland Pain DAC and Pernix
Therapeutics, LLC.
3. All parent corporations and any publicly held companies that own 10% or
more of the stock of the parties I represent are: Pernix Therapeutics Holdings,
Inc.
4. The names of all law firms and the partners or associates that appeared for
the parties now represented by me in the trial court or are expected to appear in this
court (and who have not or will not enter an appearance in this case) are:
Daniel M. Silver, Benjamin A. Smyth, and Michael P. Kelly (McCarter &
English, LLP); David G. Varghese and Christopher J. Stankus (formerly
Fitzpatrick, Cella, Harper & Scinto).
Dated: November 9, 2018 /s/ Dominick A. Conde

Dominick A. Conde
Counsel for Plaintiff-Appellants

Pernix Ireland Pain DAC and
Pernix Therapeutics, LLC
i
Table of Contents
Statement of Related Cases ........................................................................................ 1
Jurisdictional Statement ............................................................................................. 1
Preliminary Statement ................................................................................................ 2
Statement of the Issues............................................................................................... 5

Statement of the Case................................................................................................. 6
I. Proceedings Below .......................................................................................... 6
II. Statement of Facts............................................................................................ 6
Summary of the Argument....................................................................................... 12

I. The District Court legally erred in concluding that Alvogen
proved by clear and convincing evidence that the claims are
obvious. .......................................................................................................... 12
II. The District Court legally erred in finding that Alvogen proved
by clear and convincing evidence that the claims lack written
description support......................................................................................... 14
Obviousness Argument ............................................................................................ 18

I. Standard of Review........................................................................................ 18
II. The District Court legally erred in concluding that the claims
were obvious over Devane in light of the Vicodin/Lortab labels
and/or Jain. ..................................................................................................... 18
A. The conclusion that there was motivation to use an

unadjusted dose cannot be reconciled with Court’s
findings and admissions from Alvogen’s experts. .............................. 18
B. The conclusion that there was a reasonable expectation of

success with an unadjusted dose cannot be reconciled
with Court’s findings and admissions from Alvogen’s
experts.................................................................................................. 20
ii
C. The District Court’s written description findings are

internally inconsistent with its obviousness conclusions. ................... 22
D. The District Court erred by relying on Jain and/or the

Vicodin/Lortab labels. ......................................................................... 24
1. The District Court legally erred in its analysis of

the IR combination products. .................................................... 24
a. The District Court legally erred by relying

on a comparison between Zohydro ER and
Vicoprofen in non-HI patients. ....................................... 24
b. As a matter of law, an untested hypothesis is

not clear and convincing evidence of
obviousness. .................................................................... 26
c. The District Court wrongly dismissed the

2016 Vicodin Label based on its date............................. 27
2. The District Court legally erred in its analysis of
Jain. ........................................................................................... 29
a. The District Court erred by taking judicial
notice of the FDA Acetaminophen
Communication, which does not support the
Court’s reasoning on motivation to combine. ................ 29
b. Devane’s data is irrelevant to Jain’s
formulation. .................................................................... 31
c. Jain is legally insufficient to show

predictability. .................................................................. 32
3. The District Court legally erred by substituting its

own opinion for Dr. Gudin’s expert opinion. ........................... 36
E. The District Court legally erred by finding that the PK

limitations were obvious based on inherency. .................................... 37
F. The District Court legally erred by finding the claims
obvious prior to considering objective indicia of
nonobviousness. .................................................................................. 38
iii
1. The District Court erred by disregarding

Cephalon’s failure. .................................................................... 39
2. The District Court erred by discounting

unexpected results. .................................................................... 40
3. The District Court erred by misinterpreting the

claims. ....................................................................................... 42
Written Description Argument ................................................................................ 44

I. Standard of Review........................................................................................ 44
II. Undisputed facts show that the inventors possessed the claimed
invention. ....................................................................................................... 44
III. The District Court’s ruling requires reversal based on Alcon. ...................... 46
A. Knowledge of why and how the invention works is
irrelevant to written description. ......................................................... 47
B. There is no requirement that the specification provide
testing showing all embodiments within the claims would
work. .................................................................................................... 48
C. Unclaimed structures and properties are relevant to

written description, yet the District Court ignored them. ................... 51
D. Unsupported conjecture as to the size of the genus is
legally insufficient to support a written description
defense. ................................................................................................ 53
IV. Fuetterer and Herschler are not distinguishable. .......................................... 54

V. The District Court improperly dismissed Union Oil. .................................... 59
VI. The District Court relied on inapposite case law. ......................................... 62
Conclusion ............................................................................................................... 65
iv
Table of Authorities
Page(s)
Cases
AbbVie Deut. GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285 (Fed. Cir. 2014) ..............................................................51, 62, 63
Alcon Research Ltd. v. Barr Labs., Inc.,

745 F.3d 1180 (Fed. Cir. 2014) ...................................................................passim
In re Alonso,
545 F.3d 1015 (Fed. Cir. 2008) ....................................................................62, 63
Alza Corp. v. Mylan Labs., Inc.,

464 F.3d 1286 (Fed. Cir. 2006) ..........................................................................34
Amgen Inc. v. Hoechst Marion Roussel, Inc.,

314 F.3d 1313 (Fed. Cir. 2003) ..............................................................57, 59, 62
Amgen Inc. v. Sanofi,

872 F.3d 1367 (Fed. Cir. 2017) ..........................................................................28
In re Angstadt,
537 F.2d 498 (C.C.P.A. 1976) ............................................................................51
Apple Inc. v. Motorola, Inc.,

757 F.3d 1286 (Fed. Cir. 2014) ....................................................................36, 61
Ariad Pharm., Inc. v. Eli Lilly & Co.,

598 F.3d 1336 (Fed. Cir. 2010) (en banc) ...................................................passim
Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,

796 F.2d 443 (Fed. Cir. 1986) ............................................................................35
Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc.,

291 F.3d 1317 (Fed. Cir. 2002) ....................................................................57, 59
Creative Compounds, LLC v. Starmark Labs.,

651 F.3d 1303 (Fed. Cir. 2011) ..........................................................................32
v
In re Cyclobenzaprine Hydrochloride Extended Release Capsule

Patent Litig.,
676 F.3d 1063 (Fed. Cir. 2012) ...................................................................passim
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,

567 F.3d 1314 (Fed. Cir. 2009) ....................................................................22, 30
Endo Pharms. Inc. v. Teva Pharms. USA, Inc.,
731 F. App’x 962 (Fed. Cir. 2018) ..................................................................... 38
Fiers v. Revel,
984 F.2d 1164 (Fed. Cir. 1993) ....................................................................62, 63
Fromson v. Advance Offset Plate, Inc.,

720 F.2d 1565 (Fed. Cir. 1983) .......................................................................... 47
In re Fuetterer,
319 F.2d 259 (C.C.P.A. 1963) .....................................................................passim
Genzyme Corp. v. Dr. Reddy’s Labs., Ltd.,
716 F. App’x 1006 (Fed. Cir. 2017) ................................................................... 21
In re Herschler,
591 F.2d 693 (C.C.P.A. 1979) ................................................................54, 58, 59
Insite Vision, Inc. v. Sandoz, Inc.,

783 F.3d 853 (Fed. Cir. 2015) ............................................................................ 20
L.A. Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly
& Co.,
849 F.3d 1049 (Fed. Cir. 2017) .......................................................................... 28
Lizard Tech Inc. v. Earth Resource Mapping, Inc.,

424 F.3d 1336 (Fed. Cir. 2005) .......................................................................... 62
Lochner Techs., LLC v. Vizio, Inc.,

567 F. App’x 931 (Fed. Cir. 2014) ..................................................................... 57
Merck Sharp & Dohme B.V. v. Warner Chilcott Co., LLC,

711 F. App’x 633 (Fed. Cir. 2017) ...............................................................30, 33
Minn. Mining & Mfg. Co. v. Johnson & Johnson Ortho., Inc.,
976 F.2d 1559 (Fed. Cir. 1992) .......................................................................... 25
vi
Noelle v. Lederman,
355 F.3d 1343 (Fed. Cir. 2004) .......................................................................... 62
Novozymes A/S v. DuPont Nut. Bio. APS,

723 F.3d 1336 (Fed. Cir. 2013) ..............................................................60, 62, 63
In re Oelrich,
666 F.2d 578 (C.C.P.A. 1981) ............................................................................ 37
Pernix Ir. Pain DAC v. Alvogen Malta Operations Ltd.,

No. 16-139-WCB, 2018 U.S. Dist. LEXIS 144226
(D. Del. Aug. 24, 2018) ........................................................................................ 6
Perricone v. Medicis Pharm. Corp.,

432 F.3d 1368 (Fed. Cir. 2005) .......................................................................... 37
Ransomes, Inc. v. Great Dane Power Equip., Inc.,
No. 98-1504, 2000 U.S. App. LEXIS 6172 (Fed. Cir. Apr. 4, 2000) ................ 40
Regents of the Univ. of Cal. v. Eli Lilly & Co.,
119 F.3d 1559 (Fed. Cir. 1997) .......................................................................... 63
Rexnord Corp. v. Laitram Corp.,

274 F.3d 1336 (Fed. Cir. 2001) .......................................................................... 57
Sanofi v. Watson Labs. Inc.,

875 F.3d 636 (Fed. Cir. 2017) ............................................................................ 27
Santarus, Inc. v. Par Pharm., Inc.,
694 F.3d 1344 (Fed. Cir. 2012) .......................................................................... 37
Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,

655 F. 3d 1364 (Fed. Cir. 2011) ......................................................................... 35
Stratoflex, Inc. v. Aeroquip Corp.,

713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 39
Tyco Healthcare Grp. LP v. Mut. Pharm. Co.,

642 F.3d 1370 (Fed. Cir. 2011) .......................................................................... 41
Union Oil Co. of Cal. v. Atlantic Richfield Co.,

208 F.3d 989 (Fed. Cir. 2000) ..........................................................16, 59, 60, 61
vii
University of Rochester v. GD Searle & Co.,

358 F.3d 916 (Fed. Cir. 2004) ............................................................3, 15, 62, 63
Vas-Cath Inc. v. Mahurkar,

935 F.2d 1555 (Fed. Cir. 1991) ....................................................................56, 57
WBIP, LLC v. Kohler Co.,

829 F.3d 1317 (Fed. Cir. 2016) ....................................................................20, 39
viii
Statement of Related Cases

There have been no other appeals in or from the civil action that is the subject
of this appeal. Counsel is not aware of any case pending in this or any other court
that will directly affect or be directly affected by this Court’s decision in the pending
appeal.
Jurisdictional Statement
Plaintiffs-Appellants (“Pernix”) appeal from the United States District Court
of Delaware’s final judgment that the nine asserted claims of the patents-in-suit
(claims 1-4, 11, 12, 17, and 19 of U.S. Patent No. 9,265,760, and claim 1 of U.S.
Patent No. 9,339,499) are invalid.
The District Court entered Final Judgment on August 24, 2018. On September
7, 2018, Pernix filed a notice of appeal.
The District Court’s jurisdiction exists under 28 U.S.C. §§ 1331 and 1338(a).
This Court has jurisdiction under 28 U.S.C. § 1295(a)(1).
1
Preliminary Statement
The District Court’s legal conclusion of obviousness is irreconcilable with its
own findings and undisputed facts. The invention is a method of treating pain in
patients with hepatic impairment (“HI”) where there is no need to adjust the dose for
those patients to accommodate for the well-established problem of drug
accumulation possibly leading to overdose and death. None of the prior art
references state that any hydrocodone formulation should be administered to HI
patients without a dose adjustment downwards. Rather they show, among other
things, that when administering opioids to HI patients one needed to exercise
“caution” or “extreme caution,” and that one would “not have been able to say”
what the proper dose of hydrocodone would be for HI patients.
The conclusion that there was a reasonable expectation of success is also
irreconcilable with the District Court’s findings that there was no “way of
predicting” whether an unadjusted dose was appropriate. And, that conclusion is
entirely inconsistent with testimony from Alvogen’s expert that “you can’t predict”
the appropriate dose for HI patients. Because unpredictability is the touchstone of
nonobviousness, the Court’s legal conclusion should be reversed.
The District Court also legally erred in holding the asserted claims invalid for
lack of written description. Written description only requires that an applicant
convey she was in possession of the invention. There is no doubt here the inventors
2
possessed the claimed invention. The specification describes an example where each
step of their claimed method is practiced using a single-entity extended-release
hydrocodone formulation that had been disclosed in the art. And, it is undisputed
that they disclosed 377 additional formulations that could be used in their method.
Those undisputed facts should have ended the inquiry, resulting in a conclusion that
the written description requirement was fulfilled.
The District Court legally erred by relying on University of Rochester v. GD
Searle & Co., 358 F.3d 916 (Fed. Cir. 2004) and its progeny, which are inapposite,
and ignoring Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir. 2014),
which is squarely on point. The Court legally erred by crediting arguments that
Alcon and other cases expressly rejected. For example, the Court emphasized that
the inventors “did not know why the [HC-ER] formulation functioned in the way it
did.” Appx98. But, there is no requirement that an inventor know “how or why the
invention works.” 745 F.3d at 1190. The Court also emphasized the absence of
testing data on formulations disclosed in the specification. Appx107-108. But, a
“patent does not need to guarantee that the invention works,” and written
description “is not about whether the patentee has proven to the skilled reader that
the invention works.”1 Id. at 1189, 1191. And, the Court dismissed characteristics
of the formulations (e.g., ratio of hydrocodone in extended release and immediate
1
Emphases have been added unless otherwise indicated.
3
release components, ingredients, and amounts) because they were not recited in the
claims. Appx91-92. But, this Court has specifically considered many such
unclaimed characteristics in written description analyses because they show that “the
inventors possessed the claimed invention.” Id. at 1191.
4
Statement of the Issues

1. Whether the District Court erred in legally concluding that the asserted claims
were obvious, where its own findings and Alvogen’s expert testimony are
irreconcilable with that conclusion, and where, inter alia, the District Court relied
on irrelevant comparisons and hypotheses, incorrectly relied on the doctrine of
inherency in its obviousness analysis, revived a reference that Alvogen dropped,
misinterpreted references absent any expert testimony, and reached its obviousness
conclusion before considering objective indicia.
2. Whether, despite undisputed facts showing that the inventors possessed the
claimed method, the District Court legally erred by: (1) requiring that the inventor
know why the invention worked, (2) requiring that the specification provide test data
for all formulations within the claims, (3) ignoring unclaimed properties and
characteristics of formulations that could be used in the methods, and (4) speculating
that an infinite number of potential formulations are covered by the claims, where
the claims were limited to certain types of formulations that could be used to treat
HI pain patients without adjusting the starting dose.
3. Whether the District Court legally erred by relying on written description
cases where inventors asserted they invented a large genus of new compositions, but
disclosed no or a very limited number of species, where here the claims recited a
new method that used known compositions.
5
Statement of the Case
I. Proceedings Below
The District Court held that the asserted claims are obvious and lack written
description support. The District Court also held that the asserted claims are not
anticipated and are infringed. See Pernix Ir. Pain DAC v. Alvogen Malta Operations
Ltd., Civil Action No. 16-139-WCB, 2018 U.S. Dist. LEXIS 144226 (D. Del. Aug.
24, 2018).
II. Statement of Facts

Pernix’s patents-in-suit are listed in the Orange Book for Zohydro ER, an
extended-release (“ER”) hydrocodone-only product for treating chronic pain.
Chronic pain and HI commonly occur together, and managing chronic pain in
patients with liver dysfunction is a difficult challenge. See, e.g., Appx306-312
(11:18-13:14, 14:10-15:1, 16:19-17:9), Appx984 (689:5-16), Appx1019-1020
(724:19-725:22).
Because most opioids are metabolized by the liver, patients with HI generally
experience significantly higher blood levels of drug when given the same dose as
given to patients without HI, which can lead to serious side effects, including
sedation, respiratory depression, or death. Appx53, Appx306-309 (11:18-12:6,
12:14-14:9), Appx588-589 (293:19-294:2), Appx2791 (col. 2:41-47), Appx3937,
Appx3942, Appx3117. Thus, at least five prior art ER opioids required lower
starting doses for HI patients. Appx2792 (col 3:10-4:29), Appx1014-1019 (719:6-

6
724:12), see also Appx2768, Appx3134, Appx3175, Appx3910. In fact, when
conducting their HI study, the inventors did not even include severe HI patients
because they thought it would place them at too great a risk. Appx697-698 (402:18-
403:6).
After conducting a clinical trial, the inventors unexpectedly found that
physicians could prescribe the same starting dose of certain ER hydrocodone-only
formulations to unimpaired patients and patients with mild or moderate HI. 2
Appx668 (373:10-15), Appx691-692 (396:22-397:19), Appx707-708 (412:23-
413:12). This allowed physicians to treat HI patients without needing to determine
the correct starting dose for each individual patient or to monitor each patient during
treatment to safely achieve efficacy. Appx531-532 (236:11-237:5), Appx539
(244:8-17). It also allowed HI patients to be given sufficient medication without
risking inadequate pain relief from a lower starting dose, which can lead to persistent
pain and other consequences including reduced quality of life. Appx1019-1020
(724:19-725:22).
Each asserted claim recites a single method of treating pain in patients with
mild or moderate HI by administering to those patients a starting dose of an ER
hydrocodone-only oral dosage unit that does not need to be adjusted relative to
2
HI is categorized as “mild,” “moderate,” or “severe” based on a standard scoring
system called the Child-Pugh Score. Appx315-316 (20:2-21:5).
7
patients without HI.3 Appx901-902 (606:17-607:16), Appx2802-2803, Appx3052.
Alvogen’s expert, Dr. Mayersohn, and Pernix’s expert, Dr. Koleng, agreed that
Example 8 of the patents-in-suit describes a clinical study where each element of
those methods was practiced using a prior art ER hydrocodone-only formulation
(“HC-ER”). Appx856-857 (561:24-562:16), Appx879-880 (584:5-585:7),
Appx903-904 (608:11-609:9).
Dr. Koleng testified that the patents disclose at least 378 representative
formulations. Appx910-911 (615:13-616:16), Appx914-917 (619:3-622:8). Dr.
Mayersohn did not dispute that testimony. The District Court referred to Dr.
Koleng’s testimony concerning the patents’ disclosure as “credible.” Appx99.
Dr. Koleng also testified that the patents-in-suit disclose structural
characteristics and properties that distinguish formulations that can be used to
practice the claimed methods from other formulations. As to structural
characteristics: first, the claims require hydrocodone, which distinguishes other
opioids, such as oxycodone. Appx933 (638:11-15), see Appx1096 (801:14-24).
Second, the claims require an ER formulation, which distinguishes immediate
release (“IR”) hydrocodone products such as Vicodin and Lortab. Appx902 (607:8-
16), Appx933 (638:6-10), see Appx476 (181:12-24). Third, the claims require a
3
Certain claims require a particular pharmacokinetic (“PK”) profile (e.g., Cmax and
AUC) that enables such dosing instead of, or in addition to, an express “no
adjustment” limitation.
8
single-entity formulation, which distinguishes it from hydrocodone/acetaminophen
combination products. Appx902 (607:8-16), see Appx476 (181:12-24). Fourth, the
specification discloses specific preferred excipients, such as hypromellose 2910
USP, ammonio methacrylate copolymer Type B NF, and silicon dioxide NF.
Appx910-911 (615:13-616:16), Appx915-917 (620:20-622:8), Appx2800 (20:7-39),
Appx2801 (21:32-64). Fifth, the specification discloses preferred amounts of each
of those excipients. Appx2801 (21:32-64). Sixth, the patents teach a preference for
including an IR component along with an ER component. Appx905-906 (610:15-
611:4), Appx958-959 (663:12-664:20). Both experts agreed the presence of an IR
component distinguishes other ER hydrocodone-only formulations such as Vantrela
ER (or “Bond”), which does not produce the claimed PK profiles. Appx873-874
(578:13-579:17), Appx962-963 (667:2-668:4). Seventh, the patents teach a 20:80
preferred ratio of hydrocodone in the IR component relative to the ER component,
which Dr. Koleng explained was the ratio in the HC-ER formulation tested in
Example 8. Appx905-906 (610:15-611:4), Appx958-959 (663:16-664:20). The
District Court credited that testimony. Appx91 (“As disclosed in the specification,
the [HC-ER] formulation contained hydrocodone bitartrate as its sole active
ingredient in a mixture of 80 percent [ER] hydrocodone and 20 percent [IR]
hydrocodone. It also contained various excipients in prescribed amounts.”).
As to physical properties, Dr. Koleng testified that the patents-in-suit disclose
9
dissolution properties of hydrocodone formulations that can be used to practice the
claimed methods. Appx903-904 (608:18-609:9). And, they provide―and certain
claims expressly require―PK properties of hydrocodone formulations that can be
used to practice the claimed methods. Appx902-904 (607:8-609:9). Dr. Koleng
testified—and Dr. Mayersohn did not dispute—that the PK properties further
distinguish formulations that can be used to practice the claimed methods from other
formulations, e.g., Bond, which does not have those PK properties and cannot be
used to practice the claimed methods because its FDA-approved label requires an
adjusted starting dose for patients with mild or moderate HI. Appx962 (667:2-16);
see Appx61-62, Appx3513, Appx3533.
Finally, Dr. Koleng, a pharmaceutics expert with over twenty years’ hands-on
experience formulating pharmaceuticals Appx895-899 (600:21-604:10), testified
that a POSA given the formulation characteristics and target PK properties in the
patents-in-suit could “envision and readily produce” formulations having those PK
properties, which allow for no adjustment in the starting dose for patients with mild
or moderate HI. Appx909-910 (614:21-615:12). He explained that a POSA could
have done so by varying the excipients and ER:IR ratio in accordance with preferred
embodiments in the specification to achieve the target dissolution profile in Example
7, which would provide confidence that a formulation would achieve the target PK
profile when tested in a clinical study. Appx910-911 (615:13-616:16), Appx915-
10
917 (620:20-622:8), Appx923-925 (628:23-630:3), Appx958-959 (663:16-664:20).
In contrast, Dr. Mayersohn conceded that he is not a formulator and not an
expert in “selecting components for making [a] final dosage form.” Appx887-888
(592:18-593:8). His opening expert report on written description consisted of a mere
three pages. Appx4136-4138. And his written description trial testimony amounted
to ten pages of conclusory speculation. Appx849-859.
11
Summary of the Argument
I. The District Court legally erred in

concluding that Alvogen proved by clear and
convincing evidence that the claims are obvious.
The District Court’s obviousness determination cannot be reconciled with
undisputed evidence (including significant admissions from Alvogen’s expert) and
the Court’s own fact findings, and should be reversed.
The inconsistencies between the Court’s findings of fact and its legal
conclusion of obviousness are stark. Among other things, the conclusion that a
POSA would have been motivated to combine references to piece together the
claimed method is inconsistent with the Court’s own findings that when
administering opioids to HI patients one needed to exercise “caution” (Appx58-59),
that “persons of skill in the art have frequently expressed the view that dosages of
opioids need to be adjusted” (Appx8), and that given the description of the field’s
knowledge expressed in two review articles (Smith and Johnson), “a skilled artisan
would not have been able to say with confidence . . . what the proper dosage of
hydrocodone” would be for HI patients (Appx59). Indeed, no prior art reference
states that an unadjusted dose of an ER hydrocodone product would be acceptable
for HI patients.
The Court’s obviousness conclusion is also inconsistent with undisputed
testimony from Alvogen’s experts that nothing in Jain suggested eliminating
12
acetaminophen from Jain’s hydrocodone-acetaminophen combination product and
that a POSA would have understood the two drugs to act synergistically. Appx592-
593 (297:3-298:5), Appx599 (304:12-15).
The Court’s conclusion that there was a reasonable expectation of success is
irreconcilable with its findings that whether a formulation would work “depend[s]
entirely on testing,” that testing was the “only way to determine” success, and that
there was no “way of predicting which formulations would work and which would
not.” Appx99-100, Appx108. It is also inconsistent with undisputed testimony from
Alvogen’s expert that “you can’t predict” whether an unadjusted dose was
appropriate. Appx595-596 (300:20-301:15).
The Court further committed legal error by:
 Failing to address FDA statements that hydrocodone-acetaminophen

combination products do not inform dosing of hydrocodone-only products;
 Relying on an expert who admitted that prior art, at most, might “create a
hypothesis” about whether a dose adjustment would be required;
 Dismissing a 2016 Vicodin label because it post-dated the inventions, while

ignoring Alvogen’s expert’s admission that the label’s teachings about
unpredictability “would have been true” as of the priority date;
 Taking judicial notice of an FDA communication expressly withdrawn from

the case by Alvogen during trial, to support the theory that one would have
been motivated to remove all the acetaminophen from combination products,
thereby depriving Pernix the opportunity to address that evidence;
 Concluding without support that certain PK properties are “more relevant”

than others, where Alvogen’s expert stated the opposite;
 Relying on Jain, which discloses no data and no specific formulation, where

13
both sides’ experts and the Examiner (who allowed the claims over Jain)
agreed the art was unpredictable, and the Court found that identifying the
specific formulation with sufficient specificity is “essential to the invention;”
but none was so identified;
 Substituting its own theory for an expert’s testimony about an article that the
expert himself authored;
 Relying, for the PK limitations, on inherency based on Devane, even though

the Court expressly found that Devane does not inherently disclose
administering its formulations to HI patients;
 Analyzing objective indicia only after finding the claim limitations obvious;
 Dismissing the undisputed crucial fact that Cephalon failed to make an ER

hydrocodone-only formulation for which the starting dose did not need to be
adjusted for patients with mild or moderate HI;
 Discounting the inventors’ statements concerning unexpected results based on

their alleged “interest in the validity of the patent,” where no evidence at trial
showed any such interest; and
 Misinterpreting the language of the claims.
The District Court’s errors require reversal. In re Cyclobenzaprine
Hydrochloride Extended Release Capsule Patent Litig., 676 F.3d 1063, 1070-71
(Fed. Cir. 2012) (reversing obviousness holding where district court’s findings
“contain[ed] an inherent contradiction,” and relied on expert testimony that “was
actually inconsistent with [the court’s] conclusion”).
II. The District Court legally erred in finding that

Alvogen proved by clear and convincing evidence
that the claims lack written description support.
The written description requirement ensures that the inventor actually
possessed the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
14
1336, 1355 (Fed. Cir. 2010) (en banc). Here, the claims recite a method of treating
pain in patients with mild or moderate HI by administering a dose of an ER
hydrocodone-only oral dosage unit that is not adjusted relative to patients without
HI. The District Court found that Example 8 of the patents-in-suit describes a
clinical study where each element of the claimed methods was practiced using a prior
art ER hydrocodone-only formulation. Appx101 (“The specification contains a
detailed description of one embodiment, the [HC-ER] formulation, together with the
test results from the [HI] study on that formulation and characteristics of that
formulation, such as its components and its dissolution profile.”). Thus, the
inventors undisputedly possessed the claimed method. That alone is sufficient to
meet the written description requirement and requires reversal.
The District Court also legally erred by relying on Rochester, where the
specification failed to identify any compound, even a prophetic one, for use in the
claimed method. 358 F.3d at 927. Rochester’s progeny are likewise inapposite, as
discussed below. As a result, the Court imposed requirements that were rejected in
Alcon and other cases.
First, the District Court required that the inventors show “what component or
combination of components was responsible for the pharmacokinetic results.”
Appx98-99. But in Alcon, this Court ruled there is no requirement “that an inventor
correctly set forth, or even know, how or why the invention works.” 745 F.3d at
15
1190. Second, the District Court required testing showing that all formulations
within the claims work, to establish that the inventors possessed the full scope of the
claimed invention. In Alcon, this Court held that a “patent does not need to guarantee
that the invention works,” and written description “is not about whether the patentee
has proven to the skilled reader that the invention works.” 745 F.3d at 1189, 1191.
The District Court here ignored the 377 additional embodiments in the patent absent
an “assurance” (i.e., data) that each would work. Appx98. This Court rejected that
argument in Alcon because a “patentee is not required to provide actual working
examples,” and thus such data is “irrelevant . . . as a legal matter.” 745 F.3d at
1189-90. Third, the District Court ignored unclaimed structural characteristics of
the formulations. Appx91-92. This Court has rejected that approach and considered
unclaimed characteristics in its written description analysis. 745 F.3d at 1191-92.
The District Court also legally erred in deeming the claims “largely
functional.” Appx92. Undisputedly, the claims are limited in several structural
ways, reciting: (1) an ER formulation, having (2) a single active ingredient, that is
(3) hydrocodone, with (4) particular PK properties. Many other opioid products
(e.g., any IR non-hydrocodone only product), can be used to treat pain in HI patients
without any of those elements, let alone all of them.
But even if the claims are functional, the Court committed reversible error by
ignoring Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989 (Fed. Cir.
16
2000), where this Court upheld claims that were purely functional, reciting no
structural characteristics. Unchallenged testimony shows that the properties
disclosed in the specification establish that the inventors possessed the claimed
invention.
17
Obviousness Argument
I. Standard of Review
This Court reviews the District Court’s legal conclusion on obviousness de
novo. Cyclobenzaprine, 676 F.3d at 1069. It reviews underlying fact findings for
clear error. Id.
II. The District Court legally erred in concluding that the claims were
obvious over Devane in light of the Vicodin/Lortab labels and/or Jain.
A. The conclusion that there was motivation to use an

unadjusted dose cannot be reconciled with Court’s
findings and admissions from Alvogen’s experts.
The Court’s conclusion that a POSA would have been motivated to administer
Devane’s formulation to patients with mild or moderate HI without adjusting the
starting dose is inconsistent with its own findings and admissions by Alvogen’s
expert. The Court found that a POSA would not be able to say a priori what the
proper dose would be for HI patients and “would have been cautious in
recommending anything more than the lowest effective dose” (Appx53):
 “For many opioids, including hydrocodone, the bulk of the

metabolism of the drug occurs in the liver. For that reason, persons
of skill in the art have frequently expressed the view that dosages of
opioids need to be adjusted for persons suffering from [HI] in order
to avoid a dangerous build-up of the opioid in the patient’s
bloodstream. Such a build-up could occur if the patient’s liver were
unable to metabolize the opioid as quickly as would be the case for
a patient with normal liver function and the patient continued to
administer additional doses of the drug.” Appx8.
 “[A POSA] would have understood that opioids are metabolized

through systems in the liver that can be impaired in patients with
18
liver dysfunction. If those systems are underperforming and the

patient is given the same dose of an opioid as would be given to a
patient without [HI], the opioid may not be metabolized quickly
enough, which could lead to an overdose of the opioid. The risk of
overdosing would be particularly significant for patients with severe
chronic pain who take opioids with regularity. As such, a [POSA]
would be cautious in dosing opioids for patients with [HI]. In
addition, given the potency of opioids as a class of drugs, a person
of skill in the art would have been cautious in recommending
anything more than the lowest effective dose to any patient . . . .”
Appx53.
 It was known in the art that “‘[d]ose reductions for most opioids may
be necessary for patients with [HI]’ and that ‘[e]xtreme caution is
warranted when using any opioid in individuals with liver disease.’”
Appx52 (quoting Appx3117).
 It was known in the art that “the ‘liver is the major site of
biotransformation for most opioids’ and that it is ‘therefore not
surprising that the prescribing information for most frequently
prescribed opioids recommends caution in patients with [HI].’”
Appx55 (quoting Appx3599).
 “A [POSA] reading the four prior art [hydrocodone] labels would

have appreciated that . . . caution would be necessary . . . .” Appx61.
 “Given the descriptions in [two review articles, Smith and Johnson],

the Court finds that a skilled artisan would not have been able to
say with confidence in July 2012 what the proper dosage of
hydrocodone would be for patients suffering from mild or moderate
[HI], or whether a dose adjustment would be necessary for such
patients.” Appx59.
 Alvogen’s Dr. Schmidt testified that nothing in Jain suggested

removing acetaminophen from its hydrocodone-acetaminophen
combination, and that “the sponsor of [Jain’s HI] study would [not]
have had any motivation to have studied that product with
hydrocodone only.” Appx592-593 (297:3-298:5), Appx599
(304:12-15).
19
The Court’s failure to reconcile those findings and testimony regarding the
lack of motivation to combine with its obviousness conclusion requires reversal.
Cyclobenzaprine, 676 F.3d at 1071-73; WBIP, LLC v. Kohler Co., 829 F.3d 1317,
1337 (Fed. Cir. 2016) (“The real question is whether [a POSA] would have plucked
one reference out of the sea of prior art[,]”—not “whether a [POSA], with two (and
only two) references sitting on the table in front of him, would” combine them “in a
way that renders the claimed invention obvious.”); Insite Vision, Inc. v. Sandoz, Inc.,
783 F.3d 853, 859, 862 (Fed. Cir. 2015) (no motivation to make water-based
azithromycin formulation where prior art as a whole showed azithromycin was
considered unstable in water).
B. The conclusion that there was a reasonable expectation of

success with an unadjusted dose cannot be reconciled with
Court’s findings and admissions from Alvogen’s experts.
The Court’s conclusion that a POSA would have had a reasonable expectation
that administering an unadjusted dose would have been successful is inconsistent
with its own findings and Alvogen’s admissions. The Court found that there was no
“way of predicting which formulations would work and which would not[,]” stating
that “testing results would be fundamental to determining which formulations
would satisfy the asserted claims[.]” Appx99, Appx107-108 (“Whether any [ER
hydrocodone-only formulations] will work, and which they are, would depend
entirely on testing[.]”), Appx100 (“[T]he only way to determine whether any [ER
20
hydrocodone-only] formulations would satisfy either the non-adjustment or the
pharmacokinetic limitations of the asserted claims would be to conduct [HI] tests on
each one.”), Appx107 (“[T]esting would be necessary to decide which, if any,
formulation . . . would produce pharmacokinetic values in [HI] patients roughly
similar to the pharmacokinetic values obtained in normal patients.”).
Dr. Schmidt repeatedly admitted that to know the proper dose for HI patients
you would need to run a PK study, and that one cannot predict the proper dose absent
such a test:
 One would need a PK study “to determine the appropriate dose for a special
population like [HI] patients” and thus “to make recommendations for [HI
patients] . . . I would have to run a study in that population.” Appx561-563
(266:5-268:6);
 The references at best “create a hypothesis, but . . . you need to test each
formulation individually.” Appx634 (339:16-22);
 “[Y]ou can’t predict the bioavailability of an [ER] product based upon the
bioavailability of an [IR] product for these hydrocodone drugs[.]” Appx591
(296:11-25); and
 “[T]o know the release characteristics [and] pharmacokinetics of any given
formulation, you would have to test that formulation.” Appx596 (301:12-20).
And no ER hydrocodone-only formulation had been tested in HI patients and
shown to work prior to the inventions of the patents-in-suit. Appx658 (363:7-17),
Appx1040-1041 (745:10-746:2); see Genzyme Corp. v. Dr. Reddy’s Labs., Ltd., 716
F. App’x 1006, 1010 (Fed. Cir. 2017) (non-precedential) (“Although [prior art]
hypothesized . . . that plerixafor may cause stem cell mobilization . . . [a] skilled
21
artisan would have recognized that [the prior art] never tested for the presence of
stem cells.”).
C. The District Court’s written description findings are

internally inconsistent with its obviousness conclusions.
The Court’s findings in its written description opinion require reversal of its
obviousness holding. The Court found “nothing in the state of the art as of July
2012 . . . would have provided guidance as to which [ER hydrocodone-only]
formulations would [achieve the claimed PK profile] and which would not[.]”
Appx105. That finding cannot be reconciled with the Court’s obviousness finding
that a POSA would “look to Jain and to the Vicodin and Lortab labels for [] guidance
as to the appropriate dosing levels of Devane’s formulation for patients with mild or
moderate [HI].” Appx78.
Other findings in the written description section also foreclose obviousness.
Compare Appx99 (finding no “way of predicting which formulations would work
and which would not”) with DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1326 (Fed. Cir. 2009) (“predictability is a touchstone of
obviousness”); compare Appx93, Appx98-99 (finding a “virtually infinite number
of potential formulation[]” choices and no “evidence at trial indicating what
component or combination of components was responsible for the [inventors’]
pharmacokinetic results”) with Cyclobenzaprine, 676 F.3d at 1071 (where prior art
gives no indication “as to which of many possible choices is likely to be successful,”

22
courts should reject “hindsight claims of obviousness.” (citation omitted)); compare
Appx96 (finding no evidence of “how th[e] [PK] results could be obtained”) with
Cyclobenzaprine, 676 F.3d at 1074 (“no evidence that skilled artisans would have
known how to achieve” invention).
Moreover, Jain does not disclose any ingredients in Vicodin CR apart from
hydrocodone and acetaminophen, let alone amounts of ingredients. Dr. Schmidt
admitted he “couldn’t predict” what ingredients would be in a formulation after
“removing” acetaminophen. Appx593-594 (298:17-299:15). The Court’s reliance
on unspecified formulations cannot be reconciled with its written description
findings that “[i]dentifying the formulation is essential to the invention[,]” and that
it is “critical that the formulation be described with sufficient specificity[.]”
Appx103.
As shown by Vantrela (see infra Obviousness Argument, Section F(1)), not
all ER hydrocodone formulations can be administered to patients with mild or
moderate HI without adjusting the starting dose. Appx3196, Appx1021 (726:7-13),
Appx1038 (743:9-21), Appx1043-1044 (748:16-749:1). And the Court correctly
concluded that “the identity of the hydrocodone formulations that would have a
similar effect on subjects with and without [HI] was not known[.]” Appx104.
Thus, the Court’s own fact findings preclude a finding of obviousness.
23
D. The District Court erred by relying

on Jain and/or the Vicodin/Lortab labels.
The District Court legally erred by relying on Jain and/or the Vicodin/Lortab
labels, all of which suggest using hydrocodone-acetaminophen combination
products, and none of which disclose any hydrocodone PK data for patients with HI.
Nothing in those references reconciles the inconsistencies discussed above. They
do not disclose using an ER-hydrocodone-only formulation without adjusting the
starting dose. Nor do they change the findings of the Court and the testimony of
Alvogen’s expert that absent data, one could not predict whether a dose adjustment
would be needed with HI patients for such a formulation.
1. The District Court legally erred in

its analysis of the IR combination products.
a. The District Court legally erred

by relying on a comparison between
Zohydro ER and Vicoprofen in non-HI patients.
The Court relied heavily on “the fact that Zogenix sought to use Vicoprofen
in seeking approval for Zohydro ER [to] suggest[] that a [POSA] would look to
combination products to inform the dosing for an [ER] opioid-only product.”
Appx77. But that is legally irrelevant because there was no Vicoprofen data with
HI patients, and Vicoprofen data in unimpaired patients has nothing to do with
dosing HI patients. And, as Dr. Schmidt testified, one could not predict the dose for
HI patients absent a PK study. See supra, Obviousness Argument, Section II(B).
24
In fact, FDA did not allow Zogenix to rely on IR combination products to
determine dosing in HI patients. Appx680-682 (385:7-387:4), Appx577 (282:16-
22), Appx728 (433:13-22). FDA required a separate PK study, which further
supports that Vicoprofen data in healthy patients is irrelevant.
This was not the only instance where FDA statements showed that data in
unimpaired patients was irrelevant to HI patients. In 2010 (two years before the
inventions here), Cephalon attempted to rely on IR combination products in lieu of
doing an HI study for its Vantrela ER hydrocodone-only product. Appx3434. But,
FDA refused, stating “there is not enough information on the [PK] aspects of the
single ingredient alone as previous knowledge of it is limited by its combination
with acetaminophen or ibuprofen.” Id. Because “the pharmacokinetics of
hydrocodone in patients with [HI] ha[d] not been characterized” in the literature,
Cephalon conducted a study to assess the pharmacokinetics of the hydrocodone in
subjects with moderate HI. Appx3473, Appx630-633 (335:5-338:24), Appx1026-
1028 (731:8-733:6).4 Minn. Mining & Mfg. Co. v. Johnson & Johnson Ortho., Inc.,
976 F.2d 1559, 1575 (Fed. Cir. 1992) (“[R]eal world considerations provide a
4
At trial, Pernix presented testimony regarding the Cephalon documents not as prior
art, but as evidence of a POSA’s motivations and expectations when reading the
prior art at the time of the invention. Appx1022 (727:7-25). The Cephalon
documents were admitted into evidence for that purpose. Appx1029-1031 (734:4-
736:22).
25
colorful picture of the state of the art, what was known by those in the art, and a solid
evidentiary foundation on which to rest a nonobviousness determination.”).
Dr. Schmidt conceded that the Cephalon documents show that information
regarding the pharmacokinetics of hydrocodone alone “didn’t exist in the literature.”
Appx633-634 (338:25-339:22). The Court did not address the Cephalon documents
or Dr. Schmidt’s testimony about them. The Court speculated that FDA has
“exacting approval requirements,” which it noted might “not speak to the issue of
obviousness[.]” Appx77. But that is internally inconsistent with the fact that the
Court relied on: (1) the FDA Acetaminophen Communication (Appx72); (2) the
FDA Guidance on HI (Appx80); and (3) “procedures of the FDA” (Appx82) to try
to show obviousness.
Nor did the Court attempt to reconcile its theory that the FDA response to
Cephalon is irrelevant with Dr. Schmidt’s admission that the “FDA’s response [to
Cephalon] is fully consistent with what I’ve been saying consistently” about a
POSA’s expectations, namely, that “you actually need to do the study” of “each
formulation individually.” Appx632 (337:12-14), Appx634 (339:16-22).
b. As a matter of law, an untested hypothesis

is not clear and convincing evidence of obviousness.
It is undisputed that the Vicodin/Lortab labels are “silent” as to the proper
dose for mild or moderate HI patients. Appx70. As the Court acknowledged, “the
[Vicodin/Lortab] labels do not mention patients with mild or moderate [HI],” and
26
based on those labels “a physician might reasonably have concluded that it would
be safe to prescribe the same starting dose for such patients as for patients without
[HI].” Appx61. Similarly, Alvogen’s expert Dr. Schmidt stated that Jain and the
combination product labels “create a hypothesis, but they don’t create a certainty,
and you need to test each formulation individually.” Appx634 (339:16-22). The
Court’s finding about what a POSA “might” have concluded, and Dr. Schmidt’s
testimony about a “hypothesis” are insufficient to support the Court’s finding of a
reasonable expectation of success. Sanofi v. Watson Labs. Inc., 875 F.3d 636, 647-
48 (Fed. Cir. 2017) (“hypothesis” did not render claims obvious).
c. The District Court wrongly dismissed

the 2016 Vicodin Label based on its date.
The 2016 Vicodin label corroborates the POSA’s understanding at the time of
the invention that the pharmacokinetics of combination products like Vicodin shed
no light on the behavior of hydrocodone-only products in HI patients. That label
states that the “relative bioavailability of hydrocodone from hydrocodone bitartrate
and acetaminophen tablets compared to [ER] hydrocodone products is unknown.”
Appx3984. The Court accorded the 2016 label “little weight” (Appx62) because it
was dated after the priority date. But doing so was erroneous because Alvogen’s Dr.
Schmidt admitted that the 2016 label “is saying that you can’t predict the
bioavailability of an [ER] product based upon the bioavailability of an [IR] product
for these hydrocodone drugs[,]” and “the statement that you can’t predict would
27
have been true as [of] July 2012 as well[.]” Appx590-591 (295:6-296:25).
Nowhere did the District Court discuss that admission.
The 2016 Vicodin label also requires a lower starting dose for all HI patients,
confirming that the Court incorrectly interpreted the prior art label’s silence on mild
and moderate HI as clear and convincing evidence that Vicodin was known to be
safe to administer to those patients without adjusting the starting dose. Appx3980,
Appx588-589 (293:10-294:2).
And it shows that, even years after the invention, no data existed for IR
products that would have provided a POSA with a reasonable expectation that an ER
hydrocodone-only product could be administered to patients with mild or moderate
HI without adjusting the starting dose. L.A. Biomedical Research Inst. at Harbor-
UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1065-66 (Fed. Cir. 2017)
(vacating obviousness determination based on speculation in the absence of data);
Cyclobenzaprine, 676 F.3d at 1068-71, 1083-84 (POSA would not have been able
to predict whether a particular PK profile would be effective with an ER formulation
absent actual data in the prior art); see Amgen Inc. v. Sanofi, 872 F.3d 1367, 1375
(Fed. Cir. 2017) (post-priority date evidence can be relevant to validity).
28
2. The District Court legally erred in its analysis of Jain.
a. The District Court erred by taking

judicial notice of the FDA Acetaminophen
Communication, which does not support
the Court’s reasoning on motivation to combine.
In ruling that a POSA would have been motivated to formulate opioid
analgesics that lacked acetaminophen entirely, the District Court took judicial notice
of a 2011 FDA Acetaminophen Communication limiting the acetaminophen content
in combination products to 325 mg per dosage unit. Appx72.
But Alvogen expressly dropped its obviousness combination including Jain
and the FDA Acetaminophen Communication during trial, and Pernix consequently
withdrew—at Alvogen’s request—its evidence regarding the FDA Acetaminophen
Communication. See Appx1371-1379 (Alvogen’s Proposed Findings of Fact and
Conclusions of Law), Appx4095 (Email from J. Reisberg to Z. Garrett dated June
11, 2018, 11:11 PM, requesting that Pernix withdraw Slide 31), Appx4040 (Slide
31, focusing on FDA Acetaminophen Communication). The Court’s sua sponte
revival of the FDA Acetaminophen Communication deprived Pernix of its right to
present evidence contradicting the Court’s interpretation, and constitutes reversible
error.
Nevertheless, nothing in the FDA Acetaminophen Communication provided
a POSA motivation to develop a method of treating HI patients with ER-
hydrocodone-only formulations using an unadjusted dose. To the contrary, the
29
Communication states that in opioid combination products, acetaminophen should
be reduced to 325 mg per dosage unit, and touts the use of acetaminophen,
explaining that acetaminophen is “safe[]” and “widely and effectively used.”
Appx3544. This Court has reversed on obviousness conclusions where the prior art
did “not actually disclose” what the district court found. Merck Sharp & Dohme
B.V. v. Warner Chilcott Co., LLC, 711 F. App’x 633, 636-37 (Fed. Cir. 2017) (non-
precedential).
Moreover, Jain itself extols the “significantly greater benefits” of
acetaminophen-containing combination products. Appx3652. Dr. Schmidt
confirmed that a POSA would not have been motivated to remove acetaminophen
from Jain’s hydrocodone-acetaminophen formulations because: (1) Jain’s “purpose”
was to combine hydrocodone and acetaminophen, which had “synergistic effects”;
(2) nothing in Jain suggested separating those two components; and (3) “the sponsor
of [Jain’s HI] study would [not] have had any motivation to have studied that
product with hydrocodone only.” Appx592-593 (297:3-298:5), Appx599 (304:12-
15); DePuy Spine, 567 F.3d at 1326 (“An inference of nonobviousness is especially
strong where the prior art’s teachings undermine the very reason being proffered as
to why a [POSA] would have combined [prior art].”).
30
b. Devane’s data is irrelevant to Jain’s formulation.

In an acknowledgement that Jain does not provide any teachings about
hydrocodone alone, the Court then looked to Devane. Appx72-73. But as the Court
found in its anticipation analysis, none of the data in Devane is for HI patients.
Appx37, Appx41. Devane makes no mention of HI patients at all. Thus, Devane is
irrelevant to motivation (or expectation of success) for the inventions here, which
are limited to HI patients.
The Court cited Table 10 of Devane, which it claimed reports “virtually
identical” AUC values for an IR hydrocodone-acetaminophen control formulation
(HC/APAP) and a 10 mg ER hydrocodone-only formulation, to support the straw-
man proposition that “acetaminophen is not something that would have a significant
impact” on the PK profile of hydrocodone. Appx73-74, citing Appx552 (257:1-8).
Pernix argued—and Dr. Schmidt agreed—that a POSA could not predict the PK
profile of hydrocodone in an ER hydrocodone-only product based on results from
any hydrocodone-acetaminophen combination product given the absence of data
regarding hydrocodone-only products. Appx1492-1493; see Obviousness
Argument, Section II(B). Dr. Schmidt never addressed how purported AUC
similarity in healthy patients allowed a POSA to predict the PK profile of Devane’s
formulation in HI patients. Indeed, healthy patient data is irrelevant.
31
Recognizing that Cmax differed for the IR HC/APAP and ER hydrocodone-
only formulations in Devane, the Court sua sponte deemed AUC “more relevant”
than Cmax. Appx73. No witness said that at trial. Dr. Schmidt stated the opposite:
Cmax “is the concentration that’s most likely to cause adverse effects.” Appx524
(229:19-21).
c. Jain is legally insufficient to show predictability.

Nothing in Jain converts the art from unpredictable to predictable. As
discussed above, Alvogen’s expert conceded that the art was unpredictable even
after considering Jain.
The Examiner expressly allowed the claims of the ’760 patent over Jain in
view of the unpredictability in the art. Appx2980 (referring to Jain as Rita). See
Creative Compounds, LLC v. Starmark Labs., 651 F.3d 1303, 1313 (Fed. Cir. 2011)
(“enhanced burden if the invalidity argument relies on the same prior art considered
during examination by the [PTO]” (quotations omitted)). The District Court
dismissed the PTO’s consideration of Jain because the Examiner cited opioids other
than hydrocodone as evidence of unpredictability. Appx77. But three experts (two
of which were Alvogen’s) agreed with the Examiner. Appx997-999 (702:11-24,
703:7-704:9), Appx1027-1028 (732:15-733:6) (Dr. Gudin), Appx880 (585:8-23)
(Dr. Mayersohn expressly agreeing with Examiner’s statements about
unpredictability across hydrocodone formulations), Appx591 (296:11-25), Appx596
32
(301:12-20), Appx633-634 (338:25-339:22) (Dr. Schmidt testifying about
unpredictability across hydrocodone formulations).
Jain states that in an HI study for Vicodin CR—the actual results of which are
not disclosed in Jain nor publicly available—Cmax and AUC values of “hydrocodone
were similar in normal subjects and subjects with mild and moderate [HI].”
Appx3649. Nowhere does Jain define “similar,” and the statement about “similar”
Cmax and AUC values for hydrocodone in HI patients is not supported by any clinical
data. Appx999-1001 (704:21-706:15).
Dr. Schmidt—Alvogen’s sole expert on the ultimate issue of obviousness—
admitted multiple times that Jain discloses “no PK data” or “values” for
hydrocodone in HI patients.5 Appx598 (303:1-4), Appx599-600 (304:23-305:10);
Merck, 711 F. App’x at 636-37. The Court ignored Dr. Schmidt’s admission, and
relied instead on the testimony of Alvogen’s other expert, Dr. Weinberger, who was
“not giving an obviousness opinion on the stand.” Appx758 (463:2-11). For this
reason alone, the District Court erred in crediting Dr. Weinberger’s purported
“opinion on obviousness.” Appx60. Regardless, Dr. Weinberger conceded that
“data means numbers,” and Jain “doesn’t actually give hard numbers about the
normals compared to mild and moderate[.]” Appx821 (526:11-21).
5
Dr. Schmidt disparaged Jain, stating “I would hope that a physician would read the
FDA approved drug label rather than a non-peer-reviewed patent or patent
application” to determine a dose. Appx571 (276:4-11).
33
The Court assumed that because Jain reported that “C max and AUC values of
acetaminophen were similar in normal subjects and subjects with mild [HI], and 34
to 42% higher in subjects with moderate [HI],” then the Cmax and AUC values for
hydrocodone in patients with mild or moderate HI must be less than 34 to 42%
because “[i]f the increases for hydrocodone had been greater than 34 to 42%, Jain
presumably would have so indicated.” Appx79-80. A “presumption” is not clear
and convincing evidence. Cyclobenzaprine, 676 F.3d at 1070, 1072 n.2 (court erred
by “assuming” knowledge in the art); Alza Corp. v. Mylan Labs., Inc., 464 F.3d
1286, 1290 (Fed. Cir. 2006) (“[L]egal determinations of obviousness . . . should be
based on evidence rather than on mere speculation or conjecture.”).
The Court attempted to bolster its opinion with FDA Guidance on HI. But, as
the Court found, the guidance only states “a label can state that no dose adjustment
is required when the pharmacokinetic parameters are less than 1.25-fold greater in
patients with [HI] than in patients with normal liver function.” Appx80, Appx3573-
3574.
Dr. Schmidt conceded that the FDA Guidance is silent as to dose adjustments
when the PK increase is between 1.25-fold and two-fold (as here), and that a dose
adjustment might be “appropriate” with a PK increase in that range. Appx584-586
(289:14-291:8). Thus, the Court’s finding and Dr. Schmidt’s testimony contradicts
34
the finding that a POSA would view an increase of less than 34 to 42% (i.e., 1.34-
fold to 1.42-fold) as not requiring a dose adjustment.
Dr. Gudin’s testimony, which is not addressed in the Court’s opinion, accords
with Dr. Schmidt’s. Dr. Gudin explained that based on FDA-approved labels of
Opana ER, OxyContin, and Nucynta, all of which are discussed in the patents-in-
suit, a dose adjustment may or may not be required for patients with mild or
moderate HI when PK increases are between 1.25-fold and two-fold greater.
Appx1016-1017 (721:3-722:5) (testifying about Opana ER), Appx2792 (col. 3:52-
4:5) (Opana ER, 1.6-fold increase in AUC for patients with mild HI required
adjusted starting dose), Appx1015 (720:5-20) (testifying about OxyContin),
Appx2792 (col. 3:10-19) (OxyContin, 1.5-fold increase in Cmax and 1.95-fold
increase in AUC required starting dose adjustment for all HI patients), Appx1017-
1018 (722:24-723:20) (testifying about Nucynta), Appx2792 (col. 3:28-38)
(Nucynta, 1.4-fold increase in Cmax and 1.7-fold increase in AUC did not require
dose adjustment for patients with mild HI); see also Appx2784 (Fig. 1).
Thus, even if a POSA did interpret Jain’s use of “similar” to mean “less than
a 34 to 42% increase,” Jain would still not provide a POSA with any reasonable
expectation that a hydrocodone-only dosage form could be dosed the same way in
patients with and without HI. A POSA could only conclude that adjustment may or
may not be required. Appx584-586 (289:9-291:8); Star Sci., Inc. v. R.J. Reynolds
35
Tobacco Co., 655 F. 3d 1364, 1376 (Fed. Cir. 2011) (prior art suggesting that
something “may” occur and that a phenomenon “might” happen is not sufficient).
The FDA Guidance, labels for Opana ER, OxyContin, and Nucynta, and the
testimony of Drs. Schmidt and Gudin, all contradict the Court’s conjecture. Bausch
& Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986)
(error where record “contradicts [district court’s] supposition”).
3. The District Court legally erred by substituting its

own opinion for Dr. Gudin’s expert opinion.
Dr. Gudin testified that IR opioid products did not inform the dosing of ER
opioid products because IR products contain smaller amounts of drug and can be
given with long intervals between doses, allowing the drug to be completely
metabolized before the next dose is given. In contrast, ER products contain much
more drug and are administered once or twice a day, thus potentially exposing a HI
patient to much more drug, as they metabolize the drug more slowly. Appx993-995
(698:6-700:7). Dr. Gudin pointed to a sentence in his own article discussing the
“magnified” risk of “oversedation and respiratory depression” for ER opioids.
Appx3958.
The Court dismissed Dr. Gudin’s testimony, stating that he misinterpreted his
own article, and that the sentence states only that the “risk of abuse” of [ER] opioids
is greater. Appx54-55. That is incorrect based on a plain reading of the sentence,
especially in light of Dr. Gudin’s testimony. Apple Inc. v. Motorola, Inc., 757 F.3d
36
1286, 1316 (Fed. Cir. 2014) (“court erred by . . . questioning the conclusions of
[patentee’s] expert, and substituting its own opinion[.]”). Although the article
generally concerns drug safety and abuse, Dr. Gudin highlighted that sentence as
referring to “the large amount of active ingredient contained within one dose [of
an ER opioid], and the extended time to elimination”—not the “risk of abuse.”
Appx3958, Appx994-995 (699:11-700:7).
E. The District Court legally erred by finding

that the PK limitations were obvious based on inherency.
The District Court legally erred in relying on inherency to conclude that
“Devane renders the pharmacokinetic limitations of the asserted claims obvious.”
Appx65. Inherency is not applicable. As the Court found (Appx37-38, Appx43),
Devane does not disclose administering its formulation to patients with mild or
moderate HI, and therefore “the natural result flowing from the operation as taught”
in Devane cannot be the claimed PK values for HI patients. In re Oelrich, 666 F.2d
578, 581 (C.C.P.A. 1981).
The District Court cites Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344,
1354 (Fed. Cir. 2012), which noted that “an obvious formulation cannot become
nonobvious simply by administering it to a patient and claiming the resulting serum
concentrations.” The inventors did not merely administer a known formulation in a
known way and claim the resulting concentrations. Instead, they developed new
methods of treating pain in patients with HI by administering an unadjusted starting

37
dose that differed from the dose those patients would have received given the prior
art. And “[n]ew uses of old products or processes are indeed patentable subject
matter.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005).
The PK values that result from the claimed methods are not the “natural result” of
any “combination of elements explicitly disclosed by the prior art” because no prior
art discloses administering Devane’s formulation to patients with mild or moderate
HI. Endo Pharms. Inc. v. Teva Pharms. USA, Inc., 731 F. App’x 962, 970-971 (Fed.
Cir. 2018) (non-precedential).
Apart from its inherency arguments, Alvogen presented no evidence
regarding the obviousness of the PK limitations. Nor could it, because as in Endo,
“the prior art references in the record . . . do not suggest the . . . pharmacokinetic
limitations recited in the asserted claims[.]” Endo, 731 F. App’x at 968; see also
Appx596 (301:3-15) (Dr. Schmidt admitting that a POSA could not predict PK
limitations).
F. The District Court legally erred by finding the claims obvious

prior to considering objective indicia of nonobviousness.
The District Court erred in finding all claim limitations obvious in part III.C
of its opinion, before considering objective indicia in part III.D. The obviousness
conclusions were premature. Cyclobenzaprine, 676 F.3d at 1075 (the “premature
nature of the court’s obviousness finding [was] apparent” because, prior to
considering the objective indicia, “the district court stated that the claimed PK
38
profile ‘would have been obvious’”). As in Cyclobenzaprine, it was “not until after
the district court found the asserted claims obvious that it proceeded to analyze the
objective considerations[.]” Id. at 1770.
1. The District Court erred by

disregarding Cephalon’s failure.
Concluding the claims were obvious prior to considering objective evidence
led the District Court to rule that Cephalon’s failure was merely a “single data point”
with “minimal significance” (Appx87-88), without ever considering how that
objective evidence “give[s] light” to and colors the prior art. Cyclobenzaprine, 676
F.3d at 1078. Properly considered, this evidence may be the “most probative and
cogent evidence in the record” of nonobviousness. See Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983).
Around the time that Zohydro ER was being developed, Cephalon was
developing another ER hydrocodone-only formulation that was later approved as
Vantrela. E.g., Appx3427. Unlike Zohydro ER, the FDA-approved label for
Vantrela requires a dose adjustment for patients with mild or moderate HI.
Appx3196, Appx1021 (726:7-13), Appx1038 (743:9-21), Appx1043-1044 (748:16-
749:1). Thus, failing to adjust the dose of Vantrela can lead to drug accumulation,
overdose, and death. See Statement of the Case, Section II. That objective evidence
shows that Alvogen’s characterization of the prior art is untenable. If the prior art
motivated a POSA to administer ER hydrocodone-only formulations to patients with

39
mild or moderate HI without adjusting the dose, then a POSA would have done so
for the Cephalon formulation. But doing so for the Cephalon formulation would
have subjected patients to possible overdose and death. WBIP, 829 F.3d at 1328
(objective indicia guard against hindsight and provide “powerful, real-world
indicators” of nonobviousness).
The Court’s reference to Hysingla neither negates Cephalon’s failure nor
evidences simultaneous invention because the Hysingla HI study report is dated a
year and a half after the inventors here reduced their invention to practice.
Appx1803, Appx3668, Appx3676, Appx664-668 (369:11-373:15); Ransomes, Inc.
v. Great Dane Power Equip., Inc., No. 98-1504, 2000 U.S. App. LEXIS 6172, at *9-
11 (Fed. Cir. Apr. 4, 2000) (non-precedential) (court erred by relying on evidence of
independent development one year after invention).
2. The District Court erred by discounting unexpected results.

Mr. Hartman testified that the results of the claimed invention were
unexpected based on “the published data from [] other controlled release opioid
products.” Appx674-675 (379:21-380:5). The Court erred in dismissing that
testimony in view of the inventors’ alleged failure to consider the HI study in Jain.
As discussed above in Section II(D)(2)(c) of the Obviousness Argument, Jain
discloses no PK data for HI patients, which accords with Mr. Hartman’s testimony
that “no clinical data . . . was available” for hydrocodone in HI patients prior to the
40
Zohydro ER study. Appx658 (363:14-17). Co-inventor Dr. Robinson testified that
based on data for an ER oxycodone-only product, which required a dose reduction,
their data was unexpected because oxycodone is similar to hydrocodone in its
chemical structure and metabolic pathway. Appx687 (392:1-9).6
The Court stated that the inventors’ testimony was less compelling because it
came “from persons with an interest in the validity of the patent[.]” Appx86-87 n.15.
But, Alvogen never made that argument. Nothing supports the Court’s finding that
the inventors, all of whom assigned their rights in the patents to Zogenix (a non-
party), had any “interest in the validity of the patent.” Pernix thus had no opportunity
to respond to this argument. The Court also misplaced reliance on Tyco Healthcare
Grp. LP v. Mut. Pharm. Co., 642 F.3d 1370, 1377 (Fed. Cir. 2011). There, the
patent-in-suit contained only a bare statement that the results were unexpected.
Tyco, 642 F.3d at 1377. Here, the inventors cited, among other things, five ER
opioid drug labels and the Johnson reference as bases for their expectations.
Appx2791-2792.
6
Unlike Alvogen’s experts, Dr. Robinson is a Ph.D. chemist. Appx683 (388:19-21).
Dr. Gudin corroborated Dr. Robinson’s testimony. Appx1008-1009 (713:15-714:24)
(“Hydrocodone and oxycodone are similar molecules, similar potencies, and even
similar metabolic pathways.”) Dr. Schmidt conceded that the two opioids were
metabolized by the same enzymes based on Hutchinson (Appx3994-4003) and
Alvogen’s own product label (Appx3102). Appx607-609 (312:12-314:16).
41
The Court believed the inventors “misunderst[ood]” the prior art, noting that
“Johnson states that 50 percent dosing is required only for patients with severe [HI];
the article is silent as to the proper dosing of hydrocodone for patients with mild or
moderate [HI].” Appx85 (emphasis original). Nowhere does the patent
specification state that Johnson recommends dosing patients with mild or moderate
HI at 50% of the normal dose. Appx673 (378:4-13), Appx1004-1005 (709:22-
710:1), see Appx2791. As Dr. Gudin explained, a POSA would understand that the
existence of a dangerous side effect—overdose—that resulted in a 50% dose
adjustment for patients with severe [HI], would teach “that a dose adjustment would
be necessary for any patient with [HI].” Appx1005 (710:2-14), see also Appx989-
990 (694:11-695:2).
3. The District Court erred by misinterpreting the claims.

The patents make clear that “mild or moderate” means no adjustment for both
patient groups. Appx2782 (Abstract), Appx2792 (col. 4:55-58), Appx2794-2795
(col. 8:10-13, 9:2-5, 9:36-37, 9:56-58), Appx2797 (col. 13:47-55). Other limitations
reinforce that construction. Appx2802 (claim 2) (requiring PK profiles for patients
with mild HI and patients with moderate HI). A plain reading of the claims only
makes sense if they mean the formulation must be able to treat mild and moderate
HI. The word “or” is used because an individual patient cannot have both “mild and
moderate” HI.
42
That Nucynta requires an adjustment only for moderate HI means it falls
outside the scope of the no-adjustment limitation. Thus, the specification’s
description of the Nucynta instruction requiring a lower starting dose for patients
with moderate HI distinguishes Nucynta from the claimed inventions, and evidences
unexpected results. The Court therefore erroneously suggests that opioids like
Nucynta requiring an adjustment for patients with moderate HI, but not mild HI,
would satisfy the no-adjustment limitation. Appx86.
The Court’s misinterpretation of the claims also distorted its view of other
prior art products. Appx84-85. Every one of the ER opioids for which PK data was
available required a dose adjustment for patients with mild HI and/or patients with
moderate HI and thus undisputedly failed to satisfy the no-adjustment limitation.
Appx1015-1019 (720:5-724:21), Appx2792, see also Appx2768, Appx3175,
Appx3134, Appx3910.
43
Written Description Argument
I. Standard of Review
While compliance with the written description requirement is a question of
fact that this Court reviews for clear error, a “district court’s interpretation of
precedent regarding the written description requirement is reviewed without
deference.” Alcon, 745 F.3d at 1190, 1192 (reversing where district court legally
“erred in failing to apply the proper test for determining whether the patents recited
an adequate written description.”).
The District Court erred as a matter of law by misapplying written description
precedent.
II. Undisputed facts show that the

inventors possessed the claimed invention.
In Alcon, this Court stated that the “critical inquiry is whether the patentee has
provided a description that in a definite way identifies the claimed invention in
sufficient detail that a person of ordinary skill would understand that the inventor
was in possession of it at the time of filing . . . which requires an objective inquiry
into the four corners of the specification.” Id. at 1190-91 (citation omitted). Here,
as in Alcon, undisputed facts show the inventors possessed the claimed invention:
 Example 8 describes a clinical study where each element of the claimed

methods was practiced using an ER hydrocodone-only formulation.
 “[M]ultiplying the six different [IR] component hydrocodone

formulations set forth in Table 1 of the common specification, by the
44
seven different modified-release coating solutions set forth in Table 2

of the specification, . . . and then multiplying that product by the nine
different dosage levels, between 10 and 80 milligrams of hydrocodone,
that were listed in the specification,” yields 378 representative
formulations disclosed by the specification (Appx95).
 The specification discloses preferred excipients, including

hypromellose 2910 USP, ammonio methacrylate copolymer Type B
NF, and silicon dioxide NF.
 The specification discloses preferred amounts of each excipient.
 The specification teaches a preference for including both an IR

component and an ER component, in a preferred ratio of 20:80 with
respect to hydrocodone, which Dr. Koleng explained was the ratio in
the HC-ER formulation tested in Example 8.
 The specification discloses dissolution properties of formulations that

can be used to practice the claimed methods.
 The specification discloses PK properties of formulations that can be

used to practice the claimed methods.
 Dr. Koleng testified that a POSA with the target PK properties could
“envision and readily produce” formulations with those PK properties,
which allow for no adjustment in the starting dose mild or moderate HI
patients. He explained that a POSA could have done so by varying the
excipients and IR:ER ratio in accordance with preferred embodiments
in the specification to achieve the target dissolution profile in Example
7, which in turn would provide confidence that a formulation would
achieve the target PK profile when tested in a clinical study. Alvogen’s
expert did not dispute that testimony.
Supra, Statement of Facts (pp.8-11).
In Alcon, this Court reversed based on a specification that had a disclosure
similar to the specification here, ruling that although the claims were general, the
45
specification, which included “concentrations of every ingredient,” data showing an
effect on stability of the formulations, and multiple other examples with “preferred
concentrations” of ingredients, met the written description requirement. 745 F.3d at
1191. Here, as in Alcon, this Court should reverse based on these undisputed facts
alone.
And, as explained below, the District Court legally erred by relying on
arguments that this Court rejected in Alcon and other cases.
III. The District Court’s ruling requires reversal based on Alcon.

Pernix’s opening post-trial brief discussed Alcon more than any other written
description case. Appx1470-1472, Appx1478-1479. But the District Court did not
and could not distinguish Alcon, because this case fits squarely within it.
In Alcon, the claims covered “a method of enhancing the chemical stability
of” a prostaglandin by “adding a chemically-stabilizing amount of a polyethoxylated
castor oil [‘PECO’].” 837 F.Supp.2d at 369. Defendant’s arguments in Alcon
mirrored Alvogen’s arguments and the District Court’s conclusions here. 745 F.3d
at 1190 (arguing claims failed written description because they encompass
“innumerable prostaglandins” and include “an endless number of combinations and
concentrations”.)
Based on “essentially the same reasons” as its enablement ruling, the district
court in Alcon accepted Defendant’s written description arguments. But the Federal
46
Circuit reversed because those reasons were legally irrelevant. 745 F.3d at 1191-92
(“Critically, Barr adduced no evidence, let alone clear and convincing evidence, that
was probative of whether . . . the patentees invented, or possessed, the methods of
the asserted claims.”). As discussed below, the District Court here made the same
mistakes.
A. Knowledge of why and how the invention

works is irrelevant to written description.
The District Court emphasized that the inventors “did not know why the [HC-
ER] formulation functioned in the way it did,” and that the patents do not specify
“what component or combination of components was responsible for the
pharmacokinetic results.” Appx98-99.
The district court in Alcon made the same findings. 837 F.Supp.2d at 377-78,
381 (inventor “did not have a clear understanding of how PECO works to stabilize
prostaglandins,” and the “patents baldly assert that PECOs chemically stabilize
prostaglandins, [but] do not disclose how”) (emphasis original). This Court held
those findings were legally irrelevant. 745 F.3d at 1190 (no requirement “that an
inventor correctly set forth, or even know, how or why the invention works.”); see
Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570 (Fed. Cir. 1983) (“[I]t
is axiomatic that an inventor need not comprehend the scientific principles on which
the practical effectiveness of his invention rests.”).
The District Court here faulted Dr. Koleng for purportedly failing to “point to
47
anything in the specification that disclosed . . . how [the PK] results could be
obtained.” Appx96. The district court in Alcon similarly found that the specification
did not disclose how to make the invention work because when “you have a lot of
variables on top of one another, the experimentation gets out of control quickly.”
837 F.Supp.2d at 383. This Court reversed because written description “is not about
. . . how to make [the invention] work, which is an enablement issue.” 745 F.3d at
1191. Here, Alvogen did not challenge enablement. And, Dr. Koleng explained
exactly how a POSA would use the patents’ disclosure to obtain the claimed PK
results. See Supra, Statement of Facts (pp.8-10) (unchallenged testimony showing
how dissolution and PK data in specification would allow a POSA to reliably make
formulations within the claims)
B. There is no requirement that the specification provide

testing showing all embodiments within the claims would work.
The District Court emphasized that “[a]ll the specification discloses is that
one such formulation will work,” concluding that “in the absence of . . . testing data,
the inventors cannot be said to have possessed the full scope of the claimed
invention.” Appx107-108; see also Appx98 (“no assurance that any particular
formulation [other than HC-ER] would work”). The district court in Alcon likewise
found no guarantee that all PECO and prostaglandin combinations would work
because, e.g., “pH, buffer, buffer concentration, preservatives, chelating agents, and
other excipients may affect the chemical stability of prostaglandins in ophthalmic

48
formulations.” 837 F.Supp.2d at 375. This Court dismissed those findings because
a “patent does not need to guarantee that the invention works,” and written
description “is not about whether the patentee has proven to the skilled reader that
the invention works.” 745 F.3d at 1189, 1191.
The District Court also emphasized that here the inventors tested only one
formulation in a clinical study. Appx104. Similarly, the district court in Alcon
pointed out that the “working examples are limited to a single prostaglandin
compound,” and that the claims encompassed “any PECO,” yet the inventors “tested
only two (2) PECO compounds.” 837 F.Supp.2d at 381-83 (emphasis original).
Again, those findings were legally irrelevant. 745 F.3d at 1191 (inventors described
“the[ir] idea that adding PECO would enhance the chemical stability of
prostaglandins across a range of various formulation parameters . . . . That is all that
the written description requirement demands.”).
Moreover, in Alcon, where the claims were directed to enhanced chemical
stability, patentee’s “own internal documents” showed its belief that PECO works
by “physically stabilizing [a prostaglandin], not by chemically stabilizing it.” 837
F.Supp.2d at 379. And, the inventor was unable to say if his invention even worked
as claimed. Id. at 377-78. Defendant then argued that the patents “do not disclose
any data for chemical stability” because “the reported data relate only to physical
stability.” 745 F.3d at 1188. But this Court rejected that argument as a matter of
49
law. Id. at 1191 (“Barr’s argument regarding the difference between physical and
chemical stability . . . [is] not relevant.”). Here, Example 8 undisputedly shows that
the inventors reduced to practice each step of their invention and reported PK data
that meets the claim limitations (supra, Statement of Facts (pp.8-10)).
The District Court also legally erred by discrediting 377 representative
formulations in the patents due to the absence of an “assurance” (i.e., PK data)
showing that each one would work. Appx98. But this Court rejected that argument
in Alcon: “a patentee is not required to provide actual working examples; we have
rejected enablement challenges based on the theory that there can be no guarantee
that prophetic examples actually work . . . . Thus, it is likewise irrelevant here, as
a legal matter, whether the . . . patents contain data proving that PECOs enhance the
chemical stability of prostaglandins.” 745 F.3d at 1189-90.
The District Court mistakenly placed the burden on patentee to demonstrate
the operability of species. Appx97 (“specification does not disclose any other
operative species that was shown to satisfy the functional claim limitations”). So
did the district court in Alcon. This Court held that approach was backwards:
“because Barr did not show that any claimed embodiments would be inoperable . .
. the district court erred as a matter of law.” 745 F.3d at 1089-90. Regardless, Dr.
Koleng testified that “I have no reason to believe [the exemplary formulations]
would not” work, and Alvogen produced no evidence to the contrary. Appx956-957
50
(661:23-662:3).
Finally, while the District Court found no “way of predicting which
formulations would work and which would not” (Appx99), in Alcon, the district
court cited evidence showing that “[m]inor differences in a prostaglandin’s chemical
structure can significantly influence its stability,” and concluded that “the
technology of stabilizing prostaglandins is highly unpredictable.” 837 F.Supp.2d at
381-82. Yet those findings did not alter the outcome on written description. See In
re Angstadt, 537 F.2d 498, 502-03 (C.C.P.A. 1976) (patentees “are not required to
disclose every species encompassed by their claims even in an unpredictable art”).
Regardless, Dr. Koleng’s unchallenged testimony showed that a POSA, using data
in the specification, could readily make additional formulations that would work.
Supra, Statement of Facts (pp.8-10).
C. Unclaimed structures and properties are relevant

to written description, yet the District Court ignored them.
The District Court expressly credited Dr. Koleng’s testimony regarding the
structural characteristics in the specification, including preferred amounts of
particular excipients along with ER and IR components in a preferred 80:20 ratio.
Appx99. But the Court dismissed those characteristics because the claims do not
require them. Appx91-92. The District Court cited no authority for the theory that
unclaimed characteristics are irrelevant to written description. This Court has stated
the opposite. AbbVie Deut. GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d
51
1285, 1298, 1301 (Fed. Cir. 2014) (rejecting argument that “unclaimed structural
features . . . are legally irrelevant.”).
Alcon is instructive. There, the claims recited: i) a “therapeutically-effective
amount of a prostaglandin”—without specifying any “concentration;” ii) “any
PECO”—without specifying any “preferred types and concentrations;” and iii) an
“aqueous composition” generally—without specifying any “formulation
parameters,” such as “osmolality and pH.” 837 F.Supp.2d at 368. In reversing, this
Court focused on unclaimed structural characteristics, including: “concentrations of
every ingredient,” “various classes of prostaglandins,” “preferred concentrations
and thirty-two specifically preferred examples of prostaglandins,” “various types
of PECOs that may be used,” “with preferred types and concentrations” for PECOs,
and “various formulation parameters, including osmolality and pH, that may be
selected when practicing the invention.” 745 F.3d at 1191. The written description
requirement was met because those unclaimed characteristics showed that “the
inventors possessed the claimed invention.” Id. The same applies here. Supra,
Statement of Facts (pp.8-10).
Finally, the District Court cited “evidence of another [ER] hydrocodone-only
formulation [Bond] that” did not “satisfy the pharmacokinetic limitations of the
claims.” Appx110. As an initial matter, that supports written description: both
sides’ experts testified that the patents teach that the Bond formulation did not have
52
an IR component, and thus differed structurally from the HC-ER formulation, which
included both IR and ER components and achieved the claimed PK profile. Supra,
Statement of Facts (p.9); see Ariad, 598 F.3d at 1350 (written description met if
patents teach structural characteristics “sufficient to distinguish the genus from other
materials.”). Regardless, in Alcon this Court reversed even though the district court
cited evidence of other PECO and prostaglandin compositions that had the claimed
structural characteristics, but did not meet the chemically stabilizing limitation. 837
F.Supp.2d at 373-80.
D. Unsupported conjecture as to the size of the genus is

legally insufficient to support a written description defense.
The District Court deemed the asserted claims “broad,” echoing Dr.
Mayersohn’s conjecture that “the potential number of formulations is unlimited. A
myriad number.” Appx856 (561:9-15); see Appx849-850 (554:13-555:11), Appx91
(claims “capture a potentially huge number of compounds”), Appx101. In Alcon,
the district court made the same conclusory findingthe asserted “claims are
extremely broad”because they “are open to a myriad of other components
typically present in ophthalmic compositions (any buffer, any preservative, any
excipient, etc.), in any concentration or ratio, and at any pH,” and thus “encompass
a “rather inordinately large number of potential compounds.” 837 F.Supp.2d at 381-
82. That made no difference on appeal, where this Court recognized that such
speculation falls short of clear and convincing evidence. 745 F.3d at 1189 (“[A]n
53
unsubstantiated conclusory statement is not sufficient.”). Regardless, as discussed
below, the claims do not encompass an unlimited number of formulations, but
instead cover a method of treating only HI patients with a specific dose, using a
particular formulation that is ER and contains hydrocodone as the only active
ingredient.
IV. Fuetterer and Herschler are not distinguishable.

The District Court legally erred in distinguishing In re Fuetterer, 319 F.2d
259 (C.C.P.A. 1963), where the Board had rejected claims for undue breadth under
§ 112. The claims there recited a combination of substances used to make rubber
tire tread stock, including “an inorganic salt that is capable of holding [the] mixture
. . . in colloidal suspension in water,” which improved traction in snow. Id. at 260-
61. The specification provided “[o]nly four examples” of such salts, which
“belong[ed] to a narrow group.” Id. at 266 (Worley, J., dissenting). The Board’s
findings in Fuetterer match the District Court’s findings here.
Findings in Fuetterer Findings in this Case
“There is no indication that the function “[N]othing in . . . the art . . . provided

asserted for the salts is known in the art guidance as to which of the broadly
so that the suitable salts could be readily claimed formulations would work and
determined” (id. at 266). which would not” (Appx105).
“[N]or is there any criteria given in the “Nothing in the specification would
disclosure by which it could be fairly indicate . . . which, if any, . . .
readily determined what salts are hydrocodone-only formulations
suitable” (id.). containing at least some of the
hydrocodone in [ER] form, would
54
satisfy the functional limitations of the

claims” (Appx109).
“[D]etermination of suitable salts thus “[D]etermining which formulations

would require testing by trial and error would work . . . would require clinical
many thousands of known salts to [HI] testing” (Appx99).
ascertain those which would function in
the manner required by the claims” (id.)
The C.C.P.A. did not refute those findings, but it reversed. The Board legally
erred because its approach “would require [Applicant] to do research on the ‘literally
thousands’ of inorganic salts and determine which of these are suitable for
incorporation into his claimed combination, apparently forgetting that he has not
invented, and is not claiming, colloid suspending agents but tire tread stock
composed of a combination of rubber and other ingredients.” Id. at 265-66. The
District Court here legally erred because it, like the Board in Fuetterer, required PK
data on all formulations that were within the claims, where the inventors were
claiming a method of use, not a formulation: “in the absence of [PK] testing data,
the inventors cannot be said to have possessed the full scope of the claimed
invention.” Appx107.
The District Court wrongly distinguished Fuetterer. First, it stated that “[t]his
case differs from Fuetterer in a critical respect,” namely, the claims there “could
employ any inorganic salt that maintains a colloidal suspension.” Appx102. But,
the District Court said the same as to the claims here: they “cover any [ER
55
hydrocodone-only] formulation that satisfies the [PK] limitations.” Appx91.
Second, the District Court imposed an incorrect requirement, seeking to
“ensure that the inventors have invented the full scope of the formulations recited
in the claims.” Appx103. The Fuetterer Court explained that was the wrong
approach because the claims recited a “combination” of known compositions, and
“nothing in patent law . . . requires appellant to discover which of all those salts have
such properties and which will function properly in his combination.” Id. at 265
(emphasis original). Dr. Koleng testified that “the claim is not a myriad of
hydrocodone formulations. It’s a method of treating pain in patients with mild or
moderate impairment utilizing an [ER] dosage form.” Appx939 (644:10-24),
Appx903 (608:5-10). And that is “exactly what [Example 8] shows.” Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991); Appx903 (608:13-609:9). Thus,
the inventors conveyed that they had possession of their invention.
Third, the District Court stated that “[i]dentifying the formulation is essential
to the invention,” whereas it believes in Fuetterer “it was not essential for the
inventor to identify the particular salts that could be effective in the claimed
combination.” Appx102-103. But identifying salts and testing them to show that
they worked in the claimed combination to improve traction would be just as
“essential” to that invention under the District Court’s theory as identifying
formulations here. Regardless, this Court has repeatedly disavowed the “essential
56
element” test used by the District Court. Cooper Cameron Corp. v. Kvaerner
Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002) (no “‘essential element’
test mandating an inquiry into what an inventor considers to be essential to his
invention and requiring that the claims incorporate those elements.”); Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1333 (Fed. Cir. 2003) (same); Vas-
Cath, 935 F.2d at 1565 (same; an attempt to ascertain “what is novel and important”
misguided).
Fourth, the District Court expressed concerns about “preempt[ing] the future
before it has arrived.” Appx110. The Court in Fuetterer addressed those concerns:
“[i]f others in the future discover what inorganic salts additional to those enumerated
do have such properties, it is clear appellant will have no control over them per se,
and equally clear his claims should not be so restricted that they can be avoided
merely by using some inorganic salt not named by appellant in his disclosure.” 319
F.2d at 265. The claims here will not cover a new hydrocodone formulation per se
because they are not composition claims. But an infringer cannot circumvent
Pernix’s claims merely by practicing the methods with an ER hydrocodone-only
formulation that the specification does not explicitly describe. Lochner Techs., LLC
v. Vizio, Inc., 567 F. App’x 931, 939 (Fed. Cir. 2014) (non-precedential) (“[A]n
applicant is not required to describe in the specification every conceivable and
possible future embodiment of his invention.”), quoting Rexnord Corp. v. Laitram
57
Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001).
Fifth, the District Court deemed the claims “largely functional,” and
concluded that the patents “merely describe[] the problem to be solved and claim[]
all solutions to it” by “saying that the method of treatment works with a formulation
that performs the recited functions.” Appx90, Appx103. In Fuetterer, however, the
Court explained that case law condemns “functionality” only where claims are
“directed merely to a ‘desired result’” (emphasis original):
The desired result of appellant’s invention is limiting the skidding of a

tire tread stock on a wet surface. . . . A myriad of alternative means for
achieving this result can be easily thought of which would not require
the particular combination of substances claimed by appellant. Insofar,
therefore, as a “functional” claim may mean one which covers all
means of arriving at the desired result, although the means by which
such result is obtained is entirely different from that disclosed by the
applicant, it is apparent that appellant’s claims are not “functional.”
319 F.2d at 263. The desired result of Pernix’s patents is treating pain in HI patients.
They do not claim all means for achieving this result, but rather only those that use:
(1) a specific (unadjusted) starting dose, of (2) an ER, (3) single-entity, (4)
hydrocodone formulation, with (5) particular PK properties. Many other opioid
products (e.g., any IR non-hydrocodone only product, like Percocet (oxycodone-
acetaminophen)) can be used to treat pain in HI patients without any of those five
elements, let alone all five in combination. Appx62. Thus, the claims here are
neither “largely functional” nor “directed merely to a ‘desired result.’”
In re Herschler, 591 F.2d 693, 698, 700-01 (C.C.P.A. 1979) followed

58
Fuetterer and found that one working example involving a single
glucocorticosteroid provided written description support for claims to a method of
using dimethyl sulfoxide in combination with “steroids in general.” The Court
explained that “[w]ere th[e] application drawn to novel ‘steroidal agents,’ a different
question would be posed.” Id. at 701.
The District Court tried to distinguish Herschler because in that case the Court
noted that steroids were “auxiliary” to the invention. Appx104. But claims do not
rise or fall based on fact-finders’ arbitrary characterization of limitations as
“essential” or “auxiliary.” Cooper, 291 F.3d at 1323; Amgen, 314 F.3d at 1333. The
District Court overlooked the context of that quotation from Herschler, where the
Court distinguished cases involving “classes of new compounds per se or claims
drawn to processes using those new compounds” from cases such as Fuetterer (and
this case) involving “claims drawn to the use of known chemical compounds in a
manner auxiliary to the invention,” which “must have a corresponding written
description only so specific as to lead one having ordinary skill in the art to that class
of compounds.” 591 F.2d at 702 (emphasis original). As the Court’s emphases
make clear, what matters is whether the claims recite new or known compositions—
and the compositions here were undisputedly known.
V. The District Court improperly dismissed Union Oil.

The District Court erroneously concluded that the claims are “largely
59
functional.” But, even if the claims were purely functional, the Court still committed
reversible error by ignoring Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d
989 (Fed. Cir. 2000). Although discussed at length in post-trial briefing (Appx1469-
1470, Appx1775), the District Court’s decision does not mention Union Oil,
apparently on the theory—which Alvogen never advanced—that Ariad overturned
Union Oil. Appx1230 (121:9-10). It did not. Union Oil has been cited in more than
120 post-Ariad decisions.7
In Union Oil, this Court held that compositions capable of reducing tailpipe
emissions, claimed solely based on their properties, had adequate written description
support notwithstanding that, unlike here, the specification did not provide specific
compositions that would achieve the claimed properties. Id. at 992, 997-1001. The
Court held that, “given the target properties, [a POSA] would have been able to
envision and readily produce a composition having those characteristics.”
Novozymes A/S v. DuPont Nut. Bio. APS, 723 F.3d 1336, 1347-48 (Fed. Cir. 2013)
(summarizing Union Oil and distinguishing it based on its facts).
Dr. Koleng’s testimony tracks the findings in Union Oil: “a POSA reading the
specification would readily envision and be able to make formulations that could
be tested to be used in the practice[] o[f] the claimed invention.” Appx941-942
(646:24-647:9). He explained that a POSA would know how to vary the excipients
7
Based on LexisNexis Shepard Report as of November 8, 2018.
60
and ER:IR ratio in accordance with the preferred embodiments in the specification
to achieve the target dissolution profile, which would provide confidence that a
formulation would achieve the target PK profile when tested in a clinical study.
Appx910-911 (615:13-616:16), Appx915-917 (620:20-622:8), Appx923-925
(628:23-630:3), Appx958-959 (663:16-664:20). And, running the PK test with HI
patients itself was routine, as Alvogen’s expert conceded. Appx473-475 (178:4-
180:18), Appx877 (582:15-23); see Alcon, 745 F.3d at 1189 (“Barr’s own expert
testified [a step] was ‘routine.’”). To the extent District Court reached the opposite
conclusion and dismissed the dissolution profile as “provid[ing] no guidance” in
“formulating other hydrocodone-only formulations” without any support (Appx98,
Appx101), that also constitutes legal error. As Dr. Koleng explained, the dissolution
profile provides guidance because it is from the HC-ER formulation that produced
the claimed PK profile. Appx958-959 (663:16-664:20); Apple, 757 F.3d at 1316
(court erred by “questioning the conclusions of [patentee’s] expert, and substituting
its own opinion.”).
The District Court found Dr. Koleng “credible” (Appx99), and concluded that
“[t]he effect of Dr. Koleng’s testimony is that by relying on the characteristics of the
[HC-ER] formulation, a formulator could likely produce other similar formulations
that would fall within the scope of the claims” (Appx100-101). That is exactly what
satisfied the written description requirement in Union Oil. 208 F.3d at 1000-01
61
(patentee “taught the desired characteristics of the final automotive fuels, realizing
that those of skill in this art know that those characteristics define the claimed
products.”). And Dr. Mayersohn did not and could not refute Dr. Koleng’s
testimony because he is not a formulator. Appx887-888 (592:18-593:8).
VI. The District Court relied on inapposite case law.

The District Court did not cite a single case holding that a method claim
reciting a new use of a known material was invalid for lack of written description
for failure to disclose a representative number of those known materials, where, as
here, the specification undisputedly described a fully enabled, reduced to practice
working example using the known material. In Ariad, Rochester, Novozymes,
LizardTech, AbbVie, Eli Lilly, Alonso, Noelle, Enzo BioChem, and Fiers, the genus
was the invention itself. See Amgen, 314 F.3d at 1332 (“Both Eli Lilly and Enzo
Biochem are inapposite to this case because the claim terms at issue here are not new
or unknown biological materials that ordinarily skilled artisans would easily
miscomprehend.”); see, e.g., Noelle v. Lederman, 355 F.3d 1343, 1345 (Fed. Cir.
2004) (claims “directed to the genus”); Lizard Tech Inc. v. Earth Resource Mapping,
Inc., 424 F.3d 1336, 1344-46 (Fed. Cir. 2005) (genus was the new methods
themselves, and not a known composition used in the methods).
And, in at least six of those cases, the inventors did not invent or describe a
single embodiment of their invention, or they provided no structural information.
62
Rochester, 358 F.3d at 927 (Fed. Cir. 2004) (“No compounds that will perform the
claimed method are disclosed, nor has any evidence been shown that such a
compound was known.”); Ariad, 598 F.3d at 1357-58 (“no working or even
prophetic examples”); Novozymes, 723 F.3d at 1348 (“no disclosure of any variant
that actually satisfies the claims”); Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir.
1993) (specification taught “a wish” for obtaining claimed DNA); Regents of the
Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997) (no
“information in the patent pertaining to th[e] [claimed] cDNA’s relevant structural
or physical characteristics”); In re Alonso, 545 F.3d 1015, 1022 & n.10 (Fed. Cir.
2008) (“Alonso has not pointed to any structure for his claimed antibodies”).
In AbbVie, defendant’s expert testified about species within the claims that the
patents did not describe, detailing how characteristics of the undisclosed product
differed “considerably” in at least five respects from the species shown in the
patents, and explaining why a POSA could not envision the undisclosed
characteristics from the patent’s disclosure. 759 F.3d at 1293, 1300-01. Alvogen’s
experts made no attempt to identify a single difference between HC-ER and another
product that could be used to produce the claimed PK profile and that would not
require an adjusted starting dose.
The District Court tried to fill that void with another single-entity ER
hydrocodone product, Hysingla, theorizing that Hysingla satisfies the claimed PK
63
limitations but differs structurally from the formulations in the patents-in-suit.
Appx110. But Alvogen did not advance a written description argument based on
Hysingla in its invalidity contentions, discovery responses, or expert reports.
Appx1605. Thus, Alvogen waived any written description argument based on
Hysingla. That alone requires reversal of the District Court’s decision.
Nor did any expert testify about Hysingla’s structural characteristics.
Alvogen stipulated before trial that none of its experts would testify about Hysingla.
Appx4006. Dr. Mayersohn testified that Hysingla is a “totally different issue”
(Appx885 (590:13-18)) that “does not enter into [his] opinion concerning written
description” (Appx881 (586:4-12)). Dr. Koleng did not mention Hysingla. The
District Court relied solely on the testimony of Pernix’s medical expert, Dr. Gudin,
who did not opine on written description. Appx110, citing Appx1080 (785:5-19),
Appx1089-1092 (794:6-797:9). And, the Court expressly limited the scope of
Alvogen’s Hysingla-related cross-examination of Dr. Gudin to unexpected results
and expectation of success. Appx1085 (790:16-25). Dr. Gudin did not discuss any
structural differences between Hysingla and the formulations in the patents, much
less concede that a POSA could not envision any undisclosed characteristics.
64
Conclusion
For the foregoing reasons, the District Court’s invalidity judgment should be
reversed.
Dated: November 9, 2018 Respectfully submitted,
/s/ Dominick A. Conde

Dominick A. Conde
Christopher P. Borello
Brendan M. O’Malley
Joshua D. Calabro
Zachary L. Garrett
VENABLE LLP
1290 Avenue of the Americas
New York, New York 10104
(212) 218-2100
dconde@venable.com
cborello@venable.com
bomalley@venable.com
jdcalabro@venable.com
zgarrett@venable.com

65
ADDENDUM
Case: 18-2361 Document
Case 1:16-cv-00139-WCB Document:
25626Filed
Page: 76 Filed:
08/24/18 Page 11/09/2018
1 of 2 PageID #: 14488
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
PERNIX IRELAND PAIN DAC and §

PERNIX THERAPEUTICS, §
§
Plaintiffs, §
§
v. §
§ Civil Action No. 16-139-WCB
ALVOGEN MALTA OPERATIONS, LTD., §
§
Defendant. §
§
§
FINAL JUDGMENT
This action came on for trial before the Court. The issues having been duly tried and a
decision having been duly rendered in the form of Findings of Fact and Conclusions of Law
entered this day,
It is ORDERED and ADJUDGED
(1) that the nine asserted claims of the patents-in-suit—claims 1–4, 11, 12, 17, and 19 of
U.S. Patent No. 9,265,760, and claim 1 of U.S. Patent No. 9,339,499—are declared to be invalid
on the ground of obviousness, under 35 U.S.C. § 103;
(2) that the nine asserted claims listed above are declared to be invalid for failure to
satisfy the written description requirement of 35 U.S.C. § 112(a);
(3) that the nine asserted claims listed above are declared not to be invalid on the ground
of anticipation, under 35 U.S.C. § 102(a);
(4) that the nine asserted claims listed above are declared to be infringed by the defendant
under 35 U.S.C. § 271(e)(2);
Appx1
Case: 18-2361 Document
25626Filed
Page: 77 Filed:
08/24/18 Page 11/09/2018
2 of 2 PageID #: 14489
(5) that although the plaintiffs have proved infringement under 35 U.S.C. § 271(e) as to
the defendant with respect to each of the nine asserted claims listed above, the Court’s finding
that all of the nine asserted claims are invalid requires that the defendant be granted judgment on
each of the plaintiffs’ claims of patent infringement;
(6) that judgment is granted to the defendant on the defendant’s counterclaims for a
declaration of invalidity with respect to the nine asserted claims listed above.
Costs are awarded to the defendant and against the plaintiffs in accordance with 28
U.S.C. § 1920.
Any other relief sought by the plaintiffs is denied. Any other relief sought by the
defendant is denied.
IT IS SO ORDERED.
SIGNED this 24th day of August, 2018.
_____________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
Appx2
Case: 18-2361Document
255 26
FiledPage: 78 Page
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of 109 PageID #: 14379
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
PERNIX IRELAND PAIN DAC and §

PERNIX THERAPEUTICS, LLC, §
§
Plaintiffs, §
§
v. § Civil Action No. 16-139-WCB
§
ALVOGEN MALTA OPERATIONS LTD., §
§
Defendant. §
§
FINDINGS OF FACT AND CONCLUSIONS OF LAW
BACKGROUND
This is a Hatch-Waxman Act case. The plaintiffs, Pernix Ireland Pain DAC and Pernix
Therapeutics, LLC, (collectively, “Pernix”) have sued the defendant, Alvogen Malta Operations
Ltd. (“Alvogen”) for patent infringement under 35 U.S.C. § 271(e)(2). Pernix is the owner of
U.S. Patent Nos. 9,265,760 (“the ’760 patent”) and 9,339,499 (“the ’499 patent”), both of which
are entitled “Treating Pain in Patients with Hepatic Impairment.” The patents share an
essentially identical specification, referred to here as the common specification. The two Pernix
patents have a priority date of July 31, 2012.
1. The Hatch-Waxman Act is the name commonly used to refer to the Drug Price
Competition and Patent Term Restoration Act of 1984, Pub. L. No. 98-417, 98 Stat. 1585
(codified at 21 U.S.C. §§ 355, 360(cc), 35 U.S.C. §§ 156, 271, 282), as amended by the
Medicare Prescription Drug Improvement and Modernization Act of 2003, Pub. L. No. 108-173,
117 Stat. 2066. The Hatch-Waxman Act was intended to strike a balance between two
competing policy interests: (1) to induce pioneering research and development of new drugs; and
1
Appx3
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(2) to enable competitors to bring low-cost generic copies of those drugs to market rapidly if
those drugs are not entitled to patent protection. See Andrx Pharm., Inc. v. Biovail Corp., 276
F.3d 1368, 1371 (Fed. Cir. 2002). To promote those objectives, the Hatch-Waxman Act
provides a means for pharmaceutical companies to resolve patent disputes relatively quickly.
Ideally, it provides for a prompt determination of whether particular drugs made and sold by
brand-name pharmaceutical companies are protected by valid patents. If the patents are held to
be infringed and not invalid, the covered drugs cannot be made and sold by generic
manufacturers until the patents expire. If the patents are held to be invalid or not infringed, the
Act provides a mechanism for prompt approval of the generic versions of the drugs by the U.S.
Food and Drug Administration (“FDA”), which regulates the sale of pharmaceutical drugs in this
country.
In order to obtain the necessary FDA approval to market a new drug, a pharmaceutical
company must file a New Drug Application (“NDA”). That application is designed to show the
FDA, through rigorous testing procedures, that the drug is safe and effective for its proposed
indications. After considering the application, and often after extended negotiations with the
pharmaceutical company, the FDA may grant the application and authorize the company to
market the drug for particular indications. The company is restricted to marketing the drug for
those indications, as dictated by FDA regulations that govern both labeling and advertising for
all prescription drugs. See 21 C.F.R. §§ 201.1–201.327 (labeling); id. § 202.1 (advertising).
In an effort to speed up the approval process for generic drugs, the Hatch-Waxman Act
provides that a generic drug manufacturer may submit an Abbreviated New Drug Application
(“ANDA”) for approval by the FDA. If the generic company intends to market a drug that is
equivalent to the first pharmaceutical company’s approved drug, the ANDA may rely on the
Appx4
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safety and efficacy studies previously submitted as part of the first company’s NDA. In order to
take advantage of those studies, the ANDA applicant must demonstrate that the proposed generic
drug is bioequivalent to the previously approved drug product. See 21 U.S.C. § 355(j)(2)(A);
Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc., 527 F.3d 1278, 1282 (Fed. Cir. 2008).
Under the Hatch-Waxman Act, NDA holders are required to notify the FDA of all patents
that “claim[] the drug for which the [NDA] applicant submitted the application . . . and with
respect to which a claim of patent infringement could reasonably be asserted.” 21 U.S.C.
§ 355(b)(1), (c)(2). The FDA lists such patents in a publication entitled “Approved Drug
Products with Therapeutic Equivalence Evaluations,” which is commonly referred to as the
“Orange Book.” See Bayer Schering Pharma AG v. Lupin, Ltd., 676 F.3d 1316, 1318 (Fed. Cir.
2012); AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1045 (Fed. Cir. 2010).
The Hatch-Waxman Act creates what is referred to as an “artificial” type of infringement
that allows for the adjudication of the parties’ rights in patents that would be infringed if the
ANDA were issued and the generic product made, used, or sold. See Eli Lilly & Co. v.
Medtronic, Inc., 496 U.S. 661, 676 (1990); Glaxo Grp. Ltd. v. Apotex, Inc., 376 F.3d 1339, 1351
(Fed. Cir. 2004). In particular, 35 U.S.C. § 271(e)(2)(A) provides that it shall be an act of patent
infringement to submit an ANDA for a drug claimed in a patent or the use of which is claimed in
a patent if the purpose of the submission of the ANDA is to obtain approval to engage in the
commercial manufacture, use, or sale of the drug claimed in the patent, or the use of which is
claimed in the patent before the patent’s expiration.
Appx5
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2. Zohydro ER, which the parties sometimes refer to as “HC-ER,” is an extended-release
hydrocodone product that contains no other active ingredients. 1 The formulation for Zohydro
ER was set forth in a prior art U.S. patent application to Devane, U.S. Patent Appl. No.
2006/0240105 (JTX37), which was published on October 26, 2006. See Trial Tr. 210:20–211:7,
368:24–369:3. When Zogenix, Inc., the prior owner of Zohydro ER, sought FDA approval to
market Zohydro ER, the FDA insisted that Zogenix conduct a “hepatic impairment study” to
determine the potential effect of Zohydro ER on patients with hepatic impairment—i.e.,
compromised liver functionality—and to determine whether special restrictions should be
imposed on the use of the drug in such patient populations. Trial Tr. 280:7–19, 359:10–360:21.
The Zohydro ER hepatic impairment study produced results that surprised the Zogenix scientists
who conducted the study. Contrary to their expectations, they discovered that the concentration
of hydrocodone in the bloodstream of subjects with mild and moderate hepatic impairment was
not dramatically higher than in patients without hepatic impairment. Trial Tr. 369:7–371:4,
379:16–380:5, 387:8–21, 391:21–393:13, 398:5–399:13, 412:23–413:12, 433:23–435:10,
440:18–25.
The FDA approved the NDA for Zohydro ER on October 25, 2013, in capsule dosage
forms ranging from 10 to 50 milligrams that are administered twice daily. The FDA-approved
label for Zohydro ER provided, in the Dosage and Administration section: “Patients with Severe
Hepatic Impairment: Initiate dosing with 10 mg every 12 hours and titrate carefully, while
monitoring for respiratory depression, sedation, and hypotension. No adjustment in starting dose
with ZOHYDRO ER is required in patients with mild or moderate hepatic impairment.” JTX5,
1
HC-ER was the internal name for the extended-release hydrocodone product before the
adoption of the brand name Zohydro ER. Trial Tr. 368:6–14.
Appx6
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at 1. In a subsection entitled Dosage Modification in Patients with Severe Hepatic Impairment,
the label advises that “[p]atients with severe hepatic impairment may have higher plasma
concentrations of hydrocodone than those with normal function,” but it adds that “[n]o
adjustment in starting dose with ZOHYDRO ER is required in patients with mild or moderate
hepatic impairment.” JTX5, at 7. And in the section dedicated to the use of the drug in specific
populations, the label repeats that “[n]o adjustment in starting dose with ZOHYDRO ER is
required in patients with mild or moderate hepatic impairment. Patients with severe hepatic
impairment may have higher plasma concentrations than those with normal hepatic function . . . .
Therefore a dosage reduction is recommended for patients with severe hepatic impairment . . . .”
JTX5, at 17. In the section on clinical pharmacology, the label reported the results of the hepatic
impairment study that was performed in connection with the filing of the NDA. JTX5, at 22.
Following the approval of Zohydro ER, Alvogen filed an ANDA seeking FDA
authorization to market a generic form of that product. Alvogen proposed to market its
hydrocodone extended-release capsules in strengths ranging from 10 to 50 milligrams. The
proposed label for Alvogen’s ANDA product, JTX6, is essentially identical to the label for
Zohydro ER. 2
3. Hydrocodone is an opioid that is widely prescribed to treat pain. It is marketed in both
an extended-release form and an immediate-release form. It is often combined with another
ingredient, and was found in several products before the priority date of Pernix’s patents,
including: Vicoprofen, which is hydrocodone combined with ibuprofen; Lortab and Vicodin,
2
The ’760 and ’499 patents had not issued at the time Alvogen filed its ANDA with the
FDA. At that time, however, there were other patents listed in the Orange Book as pertinent to
Zohydro ER. Those patents are not at issue in this case.
Appx7
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which are hydrocodone combined with acetaminophen; and TussiCaps, which is hydrocodone
combined with chlorpheniramine, an antihistamine, and is approved for coughs and upper
respiratory symptoms. Vicoprofen, Lortab, and Vicodin were sold in immediate-release form,
while TussiCaps was sold as an extended-release product.
Since the priority date of the Pernix patents, two other extended-release hydrocodone
products were developed besides Zohydro ER—Hysingla ER and Vantrela. Neither of those
products has an active ingredient other than hydrocodone. In addition, many other opioid
products, both immediate-release and extended-release, have been on the market since before the
priority date of the Pernix patents, including Percocet and OxyContin, which contain oxycodone;
Dilaudid and Exalgo, which contain hydromorphone; Opana and Opana ER, which contain
oxymorphone; Nucynta ER, which contains tapentadol; and Kadian and Avinza, which contain
morphine.
For many opioids, including hydrocodone, the bulk of the metabolism of the drug occurs
in the liver. For that reason, persons of skill in the art have frequently expressed the view that
dosages of opioids need to be adjusted for persons suffering from hepatic impairment in order to
avoid a dangerous build-up of the opioid in the patient’s bloodstream. Such a build-up could
occur if the patient’s liver were unable to metabolize the opioid as quickly as would be the case
for a patient with normal liver function and the patient continued to administer additional doses
of the drug.
4. Following the hepatic impairment study that was conducted as part of the NDA
process, the scientists who worked on the project filed applications for the patents-in-suit.
Although the Zohydro ER study was the only clinical study supporting the patent, the inventors
did not limit themselves to claiming the Zohydro ER formulation or a method of treatment using
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the Zohydro ER formulation. Rather, the inventors claimed a method of treating pain in a patient
having mild or moderate hepatic impairment in which the patient would be administered “a
starting dose of an oral dosage unit having hydrocodone bitartrate as the only active ingredient,
wherein the dosage unit comprises an extended release formulation of hydrocodone bitartrate.” 3
The ’760 patent issued to Pernix on February 23, 2016. Ten days later, Pernix brought
this action, alleging that Alvogen’s act of filing its ANDA infringed the ’760 patent. Pernix
sought injunctive and declaratory relief to prevent Alvogen from marketing its proposed product.
After the ’499 patent issued on May 17, 2016, Pernix filed an amended complaint adding claims
of infringement of that patent.
5. Pernix’s patents claim methods of treating pain in patients with mild or moderate
hepatic impairment. The methods recited in the asserted claims entail using a formulation
comprising hydrocodone in an extended-release form, in which hydrocodone is the only active
ingredient and in which the formulation has effects on patients with mild or moderate hepatic
impairment similar to its effects on patients without hepatic impairment. The common
specification contains an embodiment described in Example 8, which is the formulation Pernix
sells under the brand name Zohydro ER.
At trial, Pernix asserted a total of nine claims from the two patents, claims 1–4, 11, 12,
17, and 19 of the ’760 patent, and claim 1 of the ’499 patent. In addition to the formulation
limitation set forth above, the various claims contain limitations seeking to capture the functional
efficacy of the invention, either by reference to the absence of a need to reduce the dosage for
3
Hydrocodone bitartrate, a salt of hydrocodone, is used to deliver hydrocodone to the
body. ’760 patent, col. 13, ll. 13–15; see Arnold Partnership v. Dudas, 362 F.3d 1338, 1339
(Fed. Cir. 2004); U.S. Pat. No. 8,808,740, col. 19, ll. 3–4; JTX13, at 25.
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patients with mild or moderate hepatic impairment relative to patients without hepatic
impairment, or by reference to particular pharmacokinetic parameters that reflect the similarity in
the results of administering the claimed formulations to persons with and without hepatic
impairment.
The parties refer to the asserted claims as falling into two groups: the two-step (or “non-
adjustment”) claims and the one-step (or “pharmacokinetic-only”) claims. The two-step non-
adjustment claims (claims 1–4 and 11 of the ’760 patent) include that “the starting dose [for a
patient with mild or moderate hepatic impairment] is not adjusted relative to a patient without
hepatic impairment.” Those claims contain two steps: a physician prescribes a starting dose that
is not adjusted, and a patient self-administers that starting dose. The one-step pharmacokinetic
claims (claims 12, 17, and 19 of the ’760 patent and claim 1 of the ’499 patent) do not contain a
“non-adjustment” limitation, but instead provide for a release profile of hydrocodone that either
results in certain defined pharmacokinetic values in patients with mild or moderate hepatic
impairment, or results in pharmacokinetic values that do not deviate by more than a certain
percentage amount from the values that the same dosage unit would produce in a patient without
hepatic impairment. The method recited in the one-step claims, as construed, requires only that a
patient self-administer an oral dosage unit that meets those pharmacokinetic parameters. 4
An example of the two-step claims is claim 1 of the ’760 patent, which provides as
follows:
4
Judge Sleet construed the term “administering” in each of the asserted claims to mean
“delivering into the body” and not to include a physician’s act of prescribing a drug to a patient.
Dkt. No. 69, at 1–2 & n.1. That construction has been applied throughout the subsequent
proceedings in this case.
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A method of treating pain in a patient having mild or moderate hepatic

impairment, the method comprising:
Administering to the patient having mild or moderate hepatic impairment
a starting dose of an oral dosage unit having hydrocodone bitartrate as the only
active ingredient, wherein the dosage unit comprises an extended release
formulation of hydrocodone bitartrate, and wherein the starting dose is not
adjusted relative to a patient without hepatic impairment.
An example of the one-step claims is claim 1 of the ’499 patent, which provides as
follows:
A method of treating pain in a patient having mild or moderate haptic

impairment, the method comprising:
administering to the patient having mild or moderate hepatic impairment
an oral dosage unit having hydrocodone bitartrate as the only active ingredient,
wherein the dosage unit comprises an extended release formulation of
hydrocodone bitartrate,
wherein the dosage unit provides a release profile of hydrocodone that:
does not increase average hydrocodone AUC0-inf in subjects suffering from
mild hepatic impairment relative to subjects not suffering from renal or hepatic
impairment in an amount of more than 14%; and
does not increase average hydrocodone AUC0-inf in subjects suffering from
moderate hepatic impairment relative to subjects not suffering from renal or
hepatic impairment in an amount of more than 30%.
All nine claims recite a method of treating pain in a patient having mild or moderate
hepatic impairment, and all nine recite a patient administering an oral dosage unit of
hydrocodone bitartrate comprising an extended-release formulation. Broken out by claim, the
functional limitations of each of the asserted claims provide as follows:
• Claim 1 of the ’760 patent adds the limitation: “wherein the starting dose is not
adjusted relative to a patient without hepatic impairment.”
• Claims 2 and 3 of the ’760 patent depend from claim 1 and add the limitation that the
dosage unit provides a release profile that does not increase average hydrocodone
AUC0-inf by more than certain percentage amounts in subjects suffering from mild or
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moderate hepatic impairment relative to subjects not suffering from renal or hepatic
impairment. 5
• Claim 4 of the ’760 patent depends from claim 1 and adds the limitation that the
dosage unit provides a release profile that does not increase average hydrocodone
Cmax by more than certain percentage amounts in subjects suffering from mild or
moderate hepatic impairment relative to subjects not suffering from renal or hepatic
impairment. 6
• Claim 11 of the ’760 patent depends from claims 1 and 9 and adds limitations to
claim 1 that the dosage unit provides a release profile of hydrocodone such that the
average hydrocodone AUC0-inf per 20 milligrams of hydrocodone bitartrate falls in
particular ranges for persons not suffering from renal or hepatic impairment, for
persons suffering from mild hepatic impairment, and for persons suffering from
moderate hepatic impairment.
• Claim 12 of the ’760 patent contains the same limitations as claims 1, 3, and 4, except
that it does not require that the “starting dose is not adjusted relative to a patient
without hepatic impairment.”
• Claims 17 and 19 of the ’760 patent depend from claim 12 and add limitations that
the dosage unit provides a release profile for hydrocodone such that the average
5
“AUC0-inf” means “area under the curve,” which is a way of measuring the total amount
of the active drug in a subject’s system over a period of time from administration (“0”) to the
time that the drug is no longer present in the subject’s body (“infinity”). ’760 patent, col. 11, ll.
12–23.
6
“Cmax” refers to the maximum observed concentration level of the active drug in the
subject’s system following administration of the drug. ’760 patent, col. 11, line 63, to col. 12,
line 5.
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hydrocodone AUC0-inf per 20 milligrams of hydrocodone bitartrate falls in particular
ranges for persons not suffering from renal or hepatic impairment, for persons
suffering from mild hepatic impairment, and for persons suffering from moderate
hepatic impairment.
• Claim 1 of the ’499 patent contains the same limitations that are common to all nine
asserted claims and adds the limitations found in claims 2 and 3 of the ’760 patent
regarding the dosage unit providing a release profile that does not increase average
hydrocodone AUC0-inf by more than certain percentage amounts in subjects suffering
from mild or moderate hepatic impairment, relative to subjects not suffering from
renal or hepatic impairment.
6. At trial, Pernix sought to show that Alvogen induced infringement of the asserted
claims. As to the two-step claims, Pernix’s theory was that by marketing its generic product,
Alvogen would infringe because (1) patients would administer the drug to themselves when
taking the oral dosage prescribed by their physicians; (2) physicians would not adjust the starting
dose of the drug when prescribing it to patients with mild or moderate hepatic impairment; (3)
physicians and patients would engage in joint direct infringement because the physicians would
direct the patients to take the drug and would condition the patients’ continued treatment on their
compliance with the physicians’ directions; and (4) Alvogen would be liable for induced
infringement, because it would encourage physicians to direct patients with hepatic impairment
to take the same dose that would be administered to patients without hepatic impairment. As to
the one-step claims, Pernix’s theory was that by marketing its generic product, Alvogen would
be liable for induced infringement, because it would induce patients to commit direct
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infringement by administering the drug to themselves, thereby producing the pharmacokinetic
results recited in the claims.
Alvogen disputed various aspects of Pernix’s infringement theory, and raised three
defenses and counterclaims at trial. First, it contended that the Devane patent application
anticipated all the asserted claims. Second, it contended that the asserted claims were invalid for
obviousness based on various references, including Devane; a 2010 published patent application
to Jain; and various products that were on the market as of the priority date of the Pernix patents,
as well as prior art publications that addressed the issue of treating hepatically impaired patients
with opioids. Finally, Alvogen contended that the asserted claims of the two Pernix patents were
much broader than the disclosures in the common specification, and thus the claims were invalid
for lacking adequate written description support in the specification.
The following findings of fact and conclusions of law address each of those issues.
DISCUSSION
I. Infringement
Pernix argues that Alvogen is liable for infringement under section 271(e)(2)(A) based on
Alvogen’s submission of an ANDA to the FDA for a drug the use of which is claimed in the
’760 and ’499 patents. In the “artificial infringement” environment of the Hatch-Waxman Act,
Pernix must show by a preponderance of the evidence that Alvogen would either directly or
indirectly infringe the asserted patents if Alvogen’s proposed product were marketed. Vanda
Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117, 1130 (Fed. Cir. 2018). At trial,
Pernix did not attempt to show that Alvogen would directly infringe any of the asserted claims,
all of which require at least one step to be performed by a patient or physician, and the Court
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granted Alvogen’s Rule 52 motion of no direct infringement at the conclusion of the trial. Trial
Tr. 809:4–25. Instead, Pernix relies on a theory of indirect infringement.
In order to establish that Alvogen indirectly infringes the asserted claims, Pernix must
first prove that all the steps of the claimed methods would be performed by or be attributable to a
single entity. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir.
2015) (en banc). For the one-step claims, Pernix’s theory is that patients with mild or moderate
hepatic impairment would directly infringe the asserted claims by taking Alvogen’s product at a
dosage level that would produce the pharmacokinetic results set forth in the claims.
For the two-step claims, in which no single actor performs all the steps of the claimed
methods, Pernix must show that joint direct infringement would occur, which requires that “the
acts of one are attributable to the other such that a single entity is responsible for the
infringement.” Id. To establish joint direct infringement, a plaintiff must show either that the
parties will be engaged in a joint enterprise or that one party will direct and control the infringing
activity of the other. Id.; see also Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357,
1364 (Fed. Cir. 2017) (Lilly–Teva). Pernix does not rely on the “joint enterprise” theory of
liability to prove joint direct infringement. Instead, Pernix’s theory is that physicians would
direct and control their patients’ administration of Alvogen’s proposed product, thereby
establishing joint direct infringement of the two-step claims.
For both the one- and two-step claims, Pernix must next show that Alvogen is liable for
induced infringement. To do so, Pernix must show that Alvogen would induce a party or parties
to directly infringe the asserted claims. Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S.
Ct. 2111, 2117 (2014); Vanda, 887 F.3d at 1130. To make that showing, Pernix must establish
that Alvogen specifically intends “to encourage another’s infringement and not merely that
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[Alvogen will have] knowledge of the acts alleged to constitute inducement.” Vanda, 887 F.3d
at 1129 (quoting DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc in
relevant part)).
Based on the evidence at trial, as discussed in detail below, the Court finds (in part I.A)
that patients with mild or moderate hepatic impairment taking Alvogen’s product in accordance
with the directions in Alvogen’s proposed label would directly infringe the one-step claims:
Physicians would prescribe a non-adjusted dose of Alvogen’s product for patients with mild or
moderate hepatic impairment, and the patients would self-administer the dosages as prescribed
and directed by their physicians. The Court finds (in part I.B) that physicians and patients would
jointly infringe the two-step claims, because the patients would self-administer the drugs
pursuant to the physicians’ direction and control. Finally, the Court finds (in part I.C) that
Alvogen’s label would induce infringement of both the one-step and two-step claims.
A. Direct Infringement: The Court’s Findings
The Court makes the following findings with regard to the issue of direct infringement:
1. Alvogen’s proposed label states that Alvogen’s product is a hydrocodone bitartrate
extended-release capsule that is indicated for the management of pain; the label specifies that the
product contains hydrocodone bitartrate as the only active ingredient. JTX6, at 1, 4, 19; see Trial
Tr. 24:10–17, 160:10–12, 160:18–23. It is undisputed that the pharmacokinetic parameters of
Alvogen’s proposed product exhibit the ranges recited in the asserted claims. JTX6, at 21; see
Trial Tr. 34:12–37:14, 160:24–161:5. As such, Alvogen’s proposed product satisfies both the
pharmacokinetic limitations and the limitation that requires “an oral dosage unit having
hydrocodone bitartrate as the only active ingredient, wherein the dosage unit comprises an
extended release formulation of hydrocodone bitartrate.”
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2. Pernix’s infringement expert, Dr. Jeffrey Gudin, testified that patients, including
patients having mild or moderate hepatic impairment, would self-administer Alvogen’s proposed
product to treat their pain. Trial Tr. 14:10–15:1, 16:19–17:9, 24:18–26:22, 82:1–17. Alvogen’s
expert did not disagree. Trial Tr. 110:6–18, 160:10–17. The Court therefore finds that patients
having mild or moderate hepatic impairment would self-administer a starting dose of Alvogen’s
proposed product, and that those patients would therefore infringe the one-step claims.
3. As for prescribing physicians, Dr. Gudin testified that at least some physicians—upon
reading the statement in Alvogen’s proposed label that “[n]o adjustment in starting dose with
Hydrocodone Bitartrate Extended Release Capsules is required in patients with mild or moderate
hepatic impairment,” JTX6, at 1, 7, 17—would not adjust the starting dose for patients with mild
or moderate hepatic impairment relative to a patient without hepatic impairment. Trial Tr.
21:24–23, 26:25–28:1, 31:20–32:8. Alvogen’s expert did not dispute that physicians would
directly infringe the “starting dose is not adjusted” step when prescribing a starting dose of
Alvogen’s product that was not adjusted for patients with mild or moderate hepatic impairment.
See Trial Tr. 110:6–18.
Based on Dr. Gudin’s testimony, the Court concludes that at least some physicians, upon
reviewing Alvogen’s proposed label, would prescribe a dose of Alvogen’s product to a patient
with mild or moderate hepatic impairment when initiating treatment that is not reduced due to
that hepatic impairment relative to the dose that the physician would prescribe to a patient
without hepatic impairment when initiating treatment. The Court also concludes, as described
above, that some hepatically impaired patients would take a non-reduced dose of Alvogen’s
product, which satisfies those limitations of the two-step claims of the ’760 and ’499 patents.
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B. Joint Infringement
1. Legal Standard
In order to prove direct infringement of the two-step claims, Pernix must show that a
physician would prescribe an unadjusted starting dose of Alvogen’s proposed product for a
patient with mild or moderate hepatic impairment, and that the patient would self-administer that
unadjusted dose. In addition, Pernix must show that patient and the physician jointly infringe, as
that term is used in patent law. Joint infringement occurs when one entity “directs or controls”
the other’s performance, or when the actors “form a joint enterprise.” Lilly–Teva, 845 F.3d at
1364 (quoting Akamai, 797 F.3d at 1022). Pernix did not pursue a joint enterprise theory, but
instead seeks to prove that physicians would direct and control their patients’ administration of
Alvogen’s proposed hydrocodone product. Direction and control can be shown where an actor
“(1) ‘conditions participation in an activity or receipt of a benefit’ upon others’ performance of
one or more steps of a patented method, and (2) ‘establishes the manner or timing of that
performance.’” Id. at 1365 (quoting Akamai, 797 F.3d at 1023).
The parties disagree about the level of conditioning necessary to satisfy the Akamai test.
Alvogen argues that “the alleged condition must be categorical to establish joint infringement.”
Dkt. No. 243, at 35. Pernix disagrees, arguing that the requirements of joint infringement can be
satisfied even if the conditioning is not absolute. Dkt. No. 244, at 35.
The case law does not support Alvogen’s strict categorical conditioning requirement.
Alvogen relies on the Federal Circuit’s opinions in Akamai, Lilly–Teva, and Travel Sentry, Inc. v.
Tropp, 877 F.3d 1370 (Fed. Cir. 2017), but a close examination of those cases shows that they do
not erect the rigid standard that Alvogen suggests.
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In Akamai, Limelight was accused of infringing a patent on methods of hosting content
and delivering it over the Internet. The evidence showed that Limelight performed several steps
of the claimed methods, but that Limelight’s customers performed at least one of the steps, in
which the customers “tagged” and “served” the content to be hosted and delivered by
Limelight’s content delivery network. The en banc Federal Circuit held that substantial evidence
supported the jury’s determination that Limelight directed or controlled its customers’
performance of the remaining method steps. The court observed that “if Limelight’s customers
wish to use Limelight’s product, they must tag and serve content.” Akamai, 797 F.3d at 1024.
That statement was based on evidence that “Limelight requires all of its customers to sign a
standard contract” that “delineates the steps customers must perform if they use the Limelight
service.” Id. The Federal Circuit did not recite any evidence that Limelight categorically
enforced the contract, but found conditioning based only on the contractual promise of the user.
Lilly–Teva, which addressed joint infringement of a method of treatment claim in the
Hatch-Waxman context, is even more directly applicable here. In Lilly–Teva, the issue of joint
infringement was presented because the patient would self-administer folic acid, after which the
physician would administer pemetrexed, a drug used to treat certain types of mesothelioma and
lung cancer. The opinion quoted expert testimony that “taking folic acid was ‘an absolute
requirement’ before pemetrexed treatment because ‘it wouldn’t be safe to take the drug without
the vitamin supplementation. . . . [I]t must be done this way.” 845 F.3d at 1366 (alterations in
original). Another expert testified that it was “standard practice” that a patient “must have taken
their required folic acid in order to have the pemetrexed administered.” Id. Based on the facts of
the Lilly–Teva case, Alvogen argues that categorical conditioning is required in order to find
joint infringement. See Dkt. No. 243, at 35.
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Alvogen reads the Lilly–Teva opinion too restrictively. As the Federal Circuit explained
in that case, the legal standard requires that a physician “cross the line from merely guiding or
instructing patients . . . to conditioning.” 845 F.3d at 1366. After reciting the evidence, the court
concluded that “a physician, in his or her discretion, need not provide pemetrexed treatment
based on the patient’s failure to perform the step of folic acid administration.” Id. (emphasis
added). The defendants in that case argued that the proof of joint infringement was insufficient
because the record lacked evidence that physicians “‘verify compliance’ with their instructions”
or “‘threaten’ denial of pemetrexed treatment.” Id. The court, however, rejected those
arguments. Instead, the court stated that conditioning “does not necessarily require double-
checking another’s performance or making threats.” Id. The court also rejected the defendants’
argument that conditioning requires a legal obligation or unavoidable technological prerequisites
to participation, which were the facts at issue in Akamai. Id. at 1366–67. The court explained
that the contract in Akamai “was not significant for imposing potential civil liability but for
‘delineat[ing] the steps’ that customers would have to perform ‘if [they] wish[ed] to use [the
defendant’s] product.’ And we did not focus on whether a customer’s failure to perform certain
steps might have made it technologically impossible for other steps to occur.” Id. at 1367 n.5
(alterations in original) (citation omitted) (quoting Akamai, 797 F.3d at 1024).
Finally, Alvogen relies on Travel Sentry, which involved a claim of joint infringement of
a patent directed to an improvement in airline luggage inspection systems. The evidence showed
that the accused infringer, Travel Sentry, performed certain steps of the patented method, and
that agents of the federal Transportation Security Administration (“TSA”) performed the final
two steps. The Federal Circuit held that the evidence was sufficient for a reasonable jury to
conclude that the TSA agents’ performance of the final two claim steps was attributable to
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Travel Sentry. The Court explained that “whatever benefits flow to TSA . . . can only be realized
if TSA performs the final two claim steps.” 877 F.3d at 1382–83. The court, moreover,
reaffirmed the conditioning standard articulated in Lilly–Teva, stating that conditioning does not
require the imposition of a “legal obligation” or a “technological prerequisite,” nor does it
require verification of compliance or a threat of denial of treatment. 877 F.3d at 1380 (quoting
Lilly–Teva, 845 F.3d at 1366–67).
Based on the applicable Federal Circuit precedent, the Court holds that double-checking
and threat-making are not required to establish that a benefit has been conditioned upon
performance of a method step. Direction or control can be shown where an actor crosses the line
from merely guiding or instructing to conditioning, even if the conditioning is not categorical in
nature.
2. The Court’s Findings
1. Pernix argues, and Alvogen does not dispute, that a physician would establish the
dosage and frequency of a patient’s administration of a drug such as Alvogen’s proposed opioid
product. See Trial Tr. 118:24–120:14. The undisputed evidence shows that (1) Alvogen’s label
instructs physicians to dose the product on a particular schedule, JTX6, at 4–8; Trial Tr. 52:7–18;
(2) physicians would give dosing instructions to their patients that establish the frequency of
administration and dosage amounts, Trial Tr. 148:10–149:17; and (3) Alvogen’s label directs
patients to use the product exactly as prescribed, JTX6, at 25; Trial Tr. 41:5–12. Nothing more
is required to show the manner or timing of performance, see Lilly–Teva, 845 F.3d at 1367–68,
and the Court therefore finds that physicians would establish the manner or timing of their
patients’ administration of Alvogen’s proposed product.
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2. The dispute between the parties concerns the extent to which physicians would
condition treatment on the patient’s self-administering Alvogen’s proposed product. The Court
finds that Pernix has proved by a preponderance of the evidence that physicians would condition
a benefit—that is, the prescription of a starting dose or subsequent prescriptions for Alvogen’s
proposed product—upon their patients’ self-administration of the drug in accordance with the
physicians’ instructions.
3. Pernix’s expert Dr. Gudin is a palliative care physician with extensive experience in
treating patients with chronic pain. Trial Tr. 7:19–24, 9:12–24. At trial, he explained that
hydrocodone, as a Schedule II drug, is subject to strict prescribing requirements, including a
prohibition on automatic refills. Trial Tr. 38:10–40:11; PTX30, at 23. As a result, according to
Dr. Gudin, each individual prescription must be written by the clinician and must include
specific instructions for use. Trial Tr. 40:1–11. Alvogen’s expert, Dr. William Schmidt, agreed
that it is important for a physician, when prescribing an opioid, to counsel the patient to follow
the physician’s instructions. Trial Tr. 150:6–12.
4. Dr. Gudin explained that the standard of care in pain management practice requires
physicians who prescribe opioids to take steps to monitor their patients to ensure they are taking
the drugs as directed. He testified, for example, that a doctor can confirm compliance with the
patient’s family or caregiver and can check the state’s prescription drug monitoring database to
confirm that the patient is filling the prescriptions as directed. Trial Tr. 51:2–13. In addition, Dr.
Gudin explained that it has become the standard of care to do toxicology testing both before the
physician writes a patient’s first prescription and then at random intervals during treatment.
Trial Tr. 51:14–23.
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5. Dr. Gudin also testified about the use of physician-patient agreements, which are
signed by both the physician and the patient and which “lay out the roles, rules and
responsibilities of patients and physicians when it comes to prescribing the controlled
substances.” Trial Tr. 42:2–4. Such physician-patient agreements often require the patients to
agree to keep the medication in a secure location, to take the medication exactly as prescribed,
and not to alter the dose or frequency of administration. Trial Tr. 42:5–11. Dr. Gudin explained
that the physician-patient agreements often state that the patient’s continued treatment is
conditioned on the patient’s following the agreement. Trial Tr. 42:11–15. According to Dr.
Gudin, “most, if not all, state medical boards mandate that clinicians use” such agreements, and
some states, including New Jersey and Florida, require them. Trial Tr. 41:18–24, 44:16–22,
131:1–132:9; PTX81.
6. A number of sample agreements were introduced into evidence. All of them condition
continued receipt of an opioid on compliance with the physician’s administration instructions.
For example, Dr. Gudin introduced the agreement that he uses in his medical practice, which
includes the statement: “I agree to take this medication as prescribed, and not to change the
amount or frequency of the medication without discussing it with the prescribing doctor.
Running out early, needing early refills, escalating doses without permission, and losing
prescriptions may be signs of misuse of the medication, and may be reasons for the doctor to
discontinue prescribing to me.” JTX22, at 1; Trial Tr. 45:10–13, 121:15–19.
7. Pernix introduced a template for controlled substances therapy for chronic pain
treatment developed by the American Academy of Pain Medicine. The template states that
“[b]ecause these medications have the potential for abuse or diversion . . . , strict accountability
is necessary for both medical safety and legal reasons.” The template requires the patient to
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“take all medications exactly as prescribed” and states that “failure to adhere to these policies
will be considered noncompliance and may result in cessation of opioid prescribing by your
physician and possible dismissal from this clinic.” PTX37, at 1–3; see also PTX82, at 1–2.
8. Pernix also submitted into evidence two template agreements distributed by the
National Institute of Health’s National Institute on Drug Abuse. The first requires that the
patient agree to “take my medication as instructed and not change the way I take it without first
talking to the doctor or other member of the treatment team,” and that the patient acknowledge
that “I may lose my right to treatment in this office if I break any part of this agreement.”
PTX39, at 2–3. The other requires that the patient agree to “not increase my medicine until I
speak with my doctor or nurse,” and acknowledge that “[i]f I break any of the rules, or if my
doctor decides that this medicine is hurting me more than helping me, this medicine may be
stopped by my doctor in a safe way.” PTX39, at 4–5.
9. The Court finds that Dr. Gudin’s testimony and the prevalence of physician-patient
agreements governing the use of opioids establishes that physicians frequently establish strict
conditions for initial prescriptions and continued opioid treatments, and that many physicians
would do so with respect to Alvogen’s proposed product. See, e.g., Trial Tr. 40:12–16 (Dr.
Gudin testifying that the patient’s agreement to take the drug as prescribed is “[a]bsolutely” a
requirement for the patient to receive treatment), 48:16–49:7 (Dr. Gudin explaining that he has
discontinued treatment for non-compliant patients “[t]housands of times”). The evidence thus
shows that physicians do not merely “guid[e] or instruct[]” their patients to follow the prescribed
dosing regimen for such opioids, but that they condition both the prescription of the starting dose
and any continued treatment on the patient’s agreement to follow the physician’s dosage plan.
As the Federal Circuit has explained, a physician need not verify compliance or issue threats to
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satisfy the “conditioning” requirement, Lilly–Teva, 845 F.3d at 1366, although the evidence at
trial shows that physicians would frequently do both when prescribing an opioid such as
Alvogen’s proposed product.
10. The Court finds Alvogen’s arguments to the contrary to be unpersuasive. First,
Alvogen argues that Dr. Gudin’s testimony proved only that physicians condition treatment on
the patients’ promise to abide by the prescribing directions. Dkt. No. 243, at 34. The Court
disagrees with that characterization of both the evidence and the applicable legal standard. Lilly–
Teva made clear that conditioning “does not necessarily require double-checking another’s
performance or making threats.” 845 F.3d at 1366. As long as the conduct goes beyond merely
“guiding or instructing,” the conditioning requirement is satisfied. The evidence at trial shows
that the governing standard is satisfied here.
11. Alvogen argues that Pernix’s evidence that physicians “may” sometimes discontinue
treatment is insufficient to satisfy the “conditions” test for joint infringement. Dkt. No. 243, at
34–37. Alvogen expert Dr. Keith Allen Candiotti testified that patients do not always follow
their physicians’ dosing instructions precisely. Trial Tr. 118:24–122:9. He explained that
“patients often deviate from prescribing instructions for, often for very good reason[s].” Trial
Tr. 119:14–17; see also Trial Tr. 120:1–25 (Dr. Candiotti testifying that patients may, for
example, underdose, and “[t]here are a lot of reasons and some medical reasons as well why
people vary [from] their pattern of medicine administration.”). He emphasized that the
physician-patient agreements referred to by Dr. Gudin state that evidence of misuse “may” lead
to the termination of their treatment, but do not categorically require it. Trial Tr. 121:23–122:9.
That argument relies on Alvogen’s position regarding the proper legal standard for
“conditioning,” which, as discussed above, is incorrect. Dr. Gudin explained that the agreements
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include the word “may” because “there are circumstances . . . where patients have a valid excuse
. . . for being non-compliant,” such as when a patient loses his medicine, so there are instances in
which a physician may elect to excuse non-compliance. Trial Tr. 47:18–48:15. But providing
for such exceptions does not alter the fact that, in the absence of a valid excuse, physicians will
typically discontinue treatment if the patient fails to properly self-administer the drug. Trial Tr.
65:5–9 (Dr. Gudin testifying that “we redirect them to be compliant, or we discontinue their
therapy.”).
12. Finally, Alvogen argues that Pernix’s “conditions” theory was “uniformly presented
as physicians conditioning treatment on the patient’s administering the drug ‘as prescribed’ or
‘exactly as prescribed.’” Dkt. No. 248, at 15 (quoting Dkt. No. 219, ex. 13 ¶ 59). Alvogen
argues that Pernix has improperly raised a “new and previously undisclosed theory that
physicians will condition treatment upon the patient’s self-administering Alvogen’s proposed
product in any manner, regardless of whether that administration is compliant with the
physician’s prescribing instructions.” Dkt. No. 248, at 16. The Court disagrees. Dr. Gudin
credibly testified that a physician would condition a prescription for Alvogen’s proposed product
upon proper administration in accordance with the physician’s instructions. See, e.g., Trial Tr.
41:17–42:15. And to the extent that Alvogen argues that the conditioning must be categorical—
that is, that a physician must require perfect compliance with the dosing instructions—Alvogen’s
position has been rejected by the Federal Circuit.
Based on the findings set forth above, the Court concludes that Pernix has proved by a
preponderance of the evidence that physicians would condition receipt of a benefit—the initial or
subsequent prescription of Alvogen’s proposed product—upon the patient’s performance of the
self-administration limitation, and that the physician establishes the manner and timing of that
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administration. The Court therefore concludes that Pernix has proved by a preponderance of the
evidence that the use of an unadjusted starting dose of Alvogen’s proposed product for persons
with mild or moderate hepatic impairment would result in joint infringement by physicians and
their patients of the two-step claims of ’760 patent.
B. Inducement
Having found that patients would directly infringe the one-step claims, and that
physicians and patients would jointly infringe the two-step claims, the Court now turns to the
question whether Alvogen’s label would induce that infringement. The Court finds that it would.
1. Legal Standard
Pernix must show “specific intent and action to induce infringement.” Lilly–Teva, 845
F.3d at 1368 (quoting Takeda Pharm. USA, Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 631
(Fed. Cir. 2015)). In the context of patent infringement litigation involving pharmaceuticals, the
Federal Circuit has held that “the sale of a product specifically labeled for use in a patented
method constitutes inducement to infringe that patent.” Eli Lilly & Co. v. Actavis Elizabeth LLC,
435 F. App’x 917, 926 (Fed. Cir. 2011).
In a Hatch-Waxman Act case in which the act of infringement under section 271(e)(2)(A)
consists of the filing of an ANDA for a method of treatment protected by a patent, “[t]he
pertinent question is whether the proposed label [of the ANDA product] instructs users to
perform the patented method.” AstraZeneca, 633 F.3d at 1060. In that setting, the Federal
Circuit has explained, “[t]he label must encourage, recommend, or promote infringement.”
Takeda, 785 F.3d at 631. Evidence that a proposed label would “inevitably lead some consumers
to practice the claimed method” can suffice to support a finding of specific intent to induce
infringement. AstraZeneca, 633 F.3d at 1060; Novartis Pharm. Corp. v. Breckenridge Pharm.,
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Inc., 248 F. Supp. 3d 578, 585 (D. Del. 2017). Put another way, the question is whether the
instructions in the label “teach an infringing use . . . such that we are willing to infer from those
instructions an affirmative intent to infringe the patent.” Takeda, 785 F.3d at 631 (emphasis
omitted) (quoting Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1329 n.2 (Fed. Cir.
2009)); Rhodes Pharm. L.P. v. Indivior, Inc., No. 16-cv-1308, 2018 WL 326405, at *7 (D. Del.
Jan. 8, 2018).
2. The Court’s Findings: The One-Step Claims
As discussed above, it is undisputed that Alvogen’s draft label directs the use of the
product for the treatment of pain and that Alvogen’s proposed product satisfies the
pharmacokinetic limitations of the one-step claims. The only remaining question bearing on
inducement is whether Alvogen’s proposed label would encourage a patient with mild or
moderate hepatic impairment to use Alvogen’s proposed product to inhibit pain. The Court
makes the following findings directed to that issue:
1. The evidence at trial established that a physician, when prescribing an opioid to treat
pain in a patient with hepatic impairment, would prefer a drug that does not require a dose
adjustment relative to the dose for a normal patient. Dr. Gudin explained that a physician would
be cautious in prescribing an opioid for a patient with hepatic impairment, and that a physician
would therefore rely on dosing recommendations and pharmacokinetic data included in the
product’s label. Trial Tr. 12:22–14:9, 24:18–26:22.
2. Alvogen’s draft label contains dosing instructions and clinical data that support the
use of the product in patients with mild or moderate hepatic impairment. JTX6, at 1 (summary
of treatment of patients with mild, moderate, and severe hepatic impairment); JTX6, at 17
(“Hepatic Impairment” section); JTX6, at 21 (“Pharmacokinetics” section).
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3. Dr. Gudin testified that a physician would look to the pharmacokinetics section of a
drug’s label to understand “how the product behaves . . . inside the patient’s body,” and that “it’s
an important section that physicians often reference.” Trial Tr. 26:6–13. Dr. Gudin also
explained that physicians generally follow the instructions provided on a drug’s label because
“it’s important to understand where to use the product and how to appropriately use the product.”
Trial Tr. 22:12–21. For those reasons, Dr. Gudin concluded that Alvogen’s label would
encourage a physician to use Alvogen’s product in treating patients with mild or moderate
hepatic impairment. Trial Tr. 26:14–22.
4. Alvogen’s expert Dr. Schmidt agreed that a physician would be encouraged to
prescribe Alvogen’s proposed product to patients with mild or moderate hepatic impairment. He
testified that “if I were selecting or recommending to a physician who [was] treating a patient
with mild or moderate hepatic insufficiency, dysfunction, I would recommend one of the
products where you don’t need to make dose adjustments.” Trial Tr. 253:10–14. That evidence
undercuts the testimony of Alvogen’s infringement expert, Dr. Candiotti, who characterized the
statements in Alvogen’s draft label as merely “data statements” and said that he does not “find it
as an endorsement at all or promoting use. It’s simply stating data without commentary as it
were.” Trial Tr. 123:17–24. The Court does not find Dr. Candiotti’s conclusory testimony on
that point to be credible. To the contrary, the Court finds that the several references to patients
with mild or moderate hepatic impairment in Alvogen’s draft label would be understood by a
physician as a recommendation that the product can be prescribed to such patients and that
Alvogen’s product would allow a patient with mild or moderate hepatic impairment to obtain the
analgesic benefits of a full dose of hydrocodone without running the risk of overdosing that some
opioid formulations might present for hepatically impaired patients.
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5. Alvogen’s label also instructs patients, including patients who suffer from mild or
moderate hepatic impairment, to administer Alvogen’s product for the treatment of pain, and to
do so as prescribed by their physicians. Alvogen’s draft label includes a Medication Guide,
directed at patients, that describes using Alvogen’s product to treat pain and instructs patients to
take the product “exactly as prescribed by your healthcare provider,” which includes taking the
starting dose as prescribed. JTX6, at 27.
6. Based on the foregoing findings, the Court finds that Alvogen’s draft label would
induce physicians to prescribe Alvogen’s product to patients with mild or moderate hepatic
impairment and would induce those patients to self-administer Alvogen’s proposed product as
directed. The Court therefore finds that Alvogen induces infringement of the one-step claims.
3. The Court’s Findings: The Two-Step Claims
The two-step claims contain the additional limitation that “the starting dose is not
adjusted relative to a patient without hepatic impairment.” The Court makes the following
findings directed to those claims:
1. Alvogen’s draft label states, three times, that “No adjustment in starting dose . . . is
required in patients with mild or moderate hepatic impairment.” JTX6, at 1, 7, 17. It also
provides pharmacokinetic data as to the effect of the drug on patients with hepatic impairment.
JTX6, at 21. Dr. Gudin explained that the pharmacokinetic information “gives the detailed
information of the performance of this drug in patients with mild to moderate hepatic
impairment,” Trial Tr. 25:22–24, and Dr. Candiotti admitted that the pharmacokinetic data is
“useful information that a physician would consider when prescribing medication,” Trial Tr.
145:8–9.
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2. The evidence at trial showed that dosing instructions in labels can be crucial
information to a prescribing physician. Dr. Gudin testified that “[o]ne of the challenges we face
as clinicians is finding the right dose of the medicine, of an effective medicine as quickly as
possible.” Trial Tr. 725:1–3. Dr. Gudin explained that both overdosing and underdosing can be
a problem, Trial Tr. 724:19–725:22, and that particularly in special populations such as patients
with hepatic impairment, “[t]he dosage selection is as important as anything else,” Trial Tr.
747:16–21. A dosing instruction that suggests that a starting dose adjustment is “not required”
would therefore be significant to the physician. Trial Tr. 798:24–799:9. Similarly, Dr. Schmidt
testified that “if you don’t have to make dose adjustments, it makes life easier for a physician,”
Trial Tr. 236:23–237:5, and that he would recommend that a physician treating a patient with
hepatic impairment use an opioid product for which a dose adjustment is not required, Trial Tr.
253:10–14. Dr. Candiotti’s statement that the information in Alvogen’s draft label is useful
information but does not constitute an endorsement or promotion of unadjusted doses for patients
with hepatic impairment, Trial Tr. 123:17–24, is unpersuasive in light of the other evidence at
trial, including the proposed label itself and the testimony of Drs. Gudin and Schmidt.
3. In response to Alvogen’s suggestion that the language “is not required” in Alvogen’s
draft label does not “encourage, recommend, or promote infringement,” see Dkt. No. 243, at 39–
40, Dr. Gudin explained that a categorical instruction on a product label—e.g., “do not adjust the
starting dose”—would be ill-advised because a physician should retain some discretion to
modify the dose in his or her judgment: “[I]f it says do not adjust the starting dose, clinicians
would not adjust the starting dose. And there are many scenarios in this patient population
where you want to adjust the starting dose.” Trial Tr. 27:20–24. The Federal Circuit has made
clear that all that is required is that “the product labeling . . . would inevitably lead some
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physicians to infringe.” Lilly–Teva, 845 F.3d at 1369 (emphasis added). Alvogen’s argument is
unavailing, as it demands that all physicians would never adjust the dose to find inducement, a
standard that is too restrictive.
Based on the findings set forth above, viewed in light of the governing case law, the
Court concludes that the language in Alvogen’s draft label is sufficient to establish inducement.
In AstraZeneca LP v. Apotex, Inc., the proposed label “implicitly instructed users to administer
the generic drug once daily,” by including statements such as “[i]n all patients, it is desirable to
downward-titrate to the lowest effective dose once asthma stability is achieved,” and “[o]nce the
desired clinical effect is achieved, consideration should be given to tapering to the lowest
effective dose.” 633 F.3d at 1057 (alterations in original). Similarly here, the trial testimony
from Dr. Gudin and Dr. Schmidt shows that a physician would be encouraged not to adjust a
starting dose for a patient with mild or moderate hepatic impairment unless instructed otherwise,
and an instruction that “no adjustment in starting dose . . . is required” would promote the
infringing use. This is not a case in which the label provides only “‘vague’ instructions that
require one to ‘look outside the label to understand the alleged implicit encouragement,” which,
without more, would not be sufficient to induce infringement.” Lilly–Teva, 845 F.3d at 1369
(quoting Takeda, 785 F.3d at 632, 634).
Alvogen relies heavily on two District of New Jersey cases in which inducement was not
found. In Acorda Therapeutics Inc. v. Apotex Inc., No. 07-4937, 2011 WL 4074116 (D.N.J.
Sept. 6, 2011), aff’d 476 F. App’x 746 (Fed. Cir. 2012), an asserted method patent concerned the
administration of a particular drug with food. The proposed label directed physicians to “the
pharmacokinetics section of the label for information on the differences between the fed and
fasted states with capsules and tablets,” and stated that physicians should be “thoroughly familiar
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with the complex effects of food” on the drug. Id. at *17. However, the court explained that
none of the label’s statements “direct any action on the part of any physician, but merely call
attention to the pharmacokinetics section.” Id. In addition, the label did not state “a preference
of one over the other or a direction to use the capsule form in the fed state.” Id. For that reason,
the court found that the label did not induce infringement. Similarly, in Shire LLC v. Amneal
Pharm., LLC, No. 11-3781, 2014 WL 2861430 (D.N.J. June 23, 2014), some of the asserted
claims recited a method of treatment that comprised administering a drug to patients “with intake
of food by said subject.” Id. at *4. The proposed label stated that the ANDA product may be
taken “with or without food.” The district court concluded that such a neutral formulation
“cannot be reasonably understood to be an instruction to engage in an infringing use” because “it
is indifferent to which option is selected.” Id. at *5.
Unlike the labels at issue in Acorda and Shire, Alvogen’s label goes beyond merely
providing pharmacokinetic data or neutral information. Rather, the label provides both data and
instructions on how to prescribe a starting dose in patients with mild or moderate hepatic
impairment. Based on the evidence at trial, the Court finds that the contents of that label would
encourage a physician to prescribe to patients with mild or moderate hepatic impairment a
starting dose of Alvogen’s proposed product that is not adjusted relative to a starting dose
prescribed to a patient without hepatic impairment.
Accordingly, the Court finds that Pernix has proved by a preponderance of the evidence
that Alvogen’s draft label would induce physicians to directly infringe the non-adjustment
limitation of the two-step claims of the ’760 patent.
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II. Anticipation
To anticipate a patent claim, a single prior art reference must contain all the limitations of
the asserted claim, either explicitly or inherently. See In re Omeprazole Patent Litig., 483 F.3d
1364, 1378 (Fed. Cir. 2007). In order to establish inherent anticipation, any missing limitations
must necessarily be present in the prior art reference, not merely probably or possibly present.
See Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002); Cont’l Can
Co. v. Monsanto Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). If the prior art reference
“necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.”
Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) (quoting In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986)). In general, “the discovery of a previously unappreciated
property of a prior art composition, or of a scientific explanation for the prior art’s functioning,
does not render the old composition patentably new to the discoverer.” Id. Anticipation is a
question of fact, subject to the court’s application of the proper legal standards in making that
factual determination. See Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1067–68 (Fed. Cir.
2017); Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1479 (Fed. Cir. 1986).
Alvogen argues that all of the asserted claims are anticipated by the Devane reference.
Devane is a published patent application entitled “Multiparticulate Modified Release
Composition.” It is directed to a controlled-release composition that provides both immediate
and delayed release of the active ingredient or ingredients. JTX37 ¶ 26. Devane teaches that its
“modified release composition” can be used with hydrocodone to provide continuous analgesia
for up to 24 hours. JTX37 ¶ 70. It provides an example of a hydrocodone bitartrate modified-
release composition with six possible immediate-release components and seven possible
modified-release components. JTX37 ¶¶ 99–102.
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Devane also describes the results of an in vivo study on patients immediately following
bunionectomy surgery, in which one of those hydrocodone bitartrate formulations was used to
treat the patients’ post-operative pain. 7 The study was conducted to evaluate the safety, efficacy,
and pharmacokinetic parameters of the hydrocodone formulation, and the Devane reference
summarizes the results from that study. JTX37 ¶¶ 104–06. The study was conducted with 115
subjects, who were administered one of six products: an extended-release hydrocodone bitartrate
formulation with 10, 20, 30 or 40 milligrams of active ingredient, a “matching active
comparator,” or a placebo. Id. The active comparator was described as containing 10 milligrams
of hydrocodone and acetaminophen, and the trial testimony indicates that the comparator was
Vicodin. Trial Tr. 256:12–14.
The Court finds (in part II.A) that Devane anticipates administering an oral dosage unit of
extended-release hydrocodone bitartrate, and (in part II.B) that Devane inherently anticipates the
pharmacokinetic limitations. However, the Court finds that Alvogen has failed to show by clear
and convincing evidence that Devane discloses the limitations that recite treating patients with
mild or moderate hepatic impairment (in part II.C) or administering a starting dose to such
patients that is not adjusted relative to the starting dose prescribed to patients without hepatic
impairment (in part II.D).
7
Bunionectomy surgery, which involves realignment and reshaping of the large toe, can
be very painful and frequently requires the use of powerful analgesia, such as provided by
opioids, for three to five days following the surgery. Trial Tr. 187:12–17.
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A. “Administering . . . [a starting dose of] an oral dosage unit having hydrocodone

bitartrate as the only active ingredient, wherein the dosage unit comprises an
extended release formulation of hydrocodone bitartrate”
The formulation disclosed in Devane’s bunionectomy study is identical to the
formulation disclosed in the asserted patents and contained in the product that has been
commercialized by Pernix under the name Zohydro ER. Trial Tr. 368:2–369:6; ’706 patent, col.
22, ll. 50–58. Devane claims a method for the treatment of pain comprising administering a
therapeutically effective amount of a composition, such as hydrocodone, in a multiparticulate
modified-release form. See JTX37, cl. 81. As such, there is no dispute that Devane discloses a
method of treating pain by administering an extended-release hydrocodone bitartrate as the only
active ingredient. Trial Tr. 184:13–186:25, 193:19–195:16; see also Trial Tr. 679:7–689:16 (Dr.
Gudin’s anticipation testimony, not disputing that Devane discloses administering an extended-
release form of hydrocodone bitartrate, unaccompanied by any other active component).
B. Pharmacokinetic Limitations
Devane inherently anticipates the pharmacokinetic limitations of the asserted claims. The
pharmacokinetic character of a particular compound is an inherent, necessarily present property
of that compound that “adds nothing of patentable consequence” when claimed as a limitation.
In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011); see also In re Cruciferous Sprout Litig., 301
F.3d 1343, 1349 (Fed. Cir. 2002) (“Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it anticipates.”); In re
Omeprazole Patent Litig., 483 F.3d at 1373; In re Papesch, 315 F.2d 381, 391 (C.C.P.A. 1963);
Cubist Pharm., Inc. v. Hospira, Inc., 75 F. Supp. 3d 641, 659–60 (D. Del. 2014), aff’d, 805 F.3d
1112 (Fed. Cir. 2015).
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Pernix’s arguments to the contrary are unavailing. Dr. Gudin’s conclusory testimony that
“Devane does not disclose any of those [pharmacokinetic] limitations,” Trial Tr. 688:25,
addresses only express anticipation, not inherency, and is therefore unhelpful on the issue. Nor
did Pernix argue in its post-trial brief or responsive brief that the pharmacokinetic limitations
were not anticipated. See Dkt. No. 244, at 14–25; Dkt. No. 248, at 6–11.
When asked during closing argument whether Pernix conceded that the pharmacokinetic
limitations are inherently anticipated, Pernix’s counsel argued that Pernix was not making such a
concession. Counsel then raised for the first time the argument that the claims recited
pharmacokinetic parameters in relative terms, rather than in absolute numbers; that is, the claims
recited that particular pharmacokinetic parameters are not increased more than a certain
percentage in patients with mild or moderate hepatic impairment as compared to patients without
hepatic impairment. Dkt. No. 254, at 92:17–93:4. The Court sees no reason why a
pharmacokinetic parameter stated in relative numbers is any less inherent and necessarily present
than such a parameter stated in absolute numbers, and Pernix’s belated argument is not supported
by any case law or trial testimony. The Court therefore finds that Devane inherently anticipates
the pharmacokinetic limitations.
C. “Administering to the patient having mild or moderate hepatic impairment”
There is no dispute that Devane is silent as to the treatment of patients with hepatic
impairment. The question, therefore, is whether Alvogen has shown by clear and convincing
evidence that Devane inherently discloses the treatment of hepatically impaired patients. The
Court finds that Alvogen has not met its burden on that issue.
In order to prove inherency, the patent challenger normally must show that the
anticipating reference “necessarily functions in accordance with, or includes, the claimed
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limitations.” In re Cruciferous Sprout Litig., 301 F.3d at 1349 (quoting MEHL/Biophile Int’l
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)). Because Devane is silent about
treating patients with hepatic impairment, it cannot be said that treating patients with hepatic
impairment “must necessarily” occur. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274
(Fed. Cir. 2010). The evidence at trial that patients with hepatic impairment are also often
treated for pain with opioids is not sufficient to establish that the treatment of patients with
hepatic impairment was necessarily contemplated for Devane’s formulation. See Therasense,
Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (“Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.” (quoting Cont’l Can Co. USA, Inc.,
948 F.2d at 1269)); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376–79 (Fed.
Cir. 2005) (narrow application of applying lotion to sunburned skin not inherently anticipated by
broad application of applying lotion topically). Because Devane does not necessarily disclose
treating patients with hepatic impairment, Alvogen fails to show inherent anticipation under its
proposed legal framework.
An alternative method of showing inherent anticipation is to use the genus-species
approach. Under that approach, “the issue of anticipation turns on whether the genus was of
such a defined and limited class that one of ordinary skill in the art could ‘at once envisage’ each
member of the genus.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012) (quoting Lilly–Zenith, 471 F.3d at 1376). 8
8
Citing Judge Schall’s separate opinion in Blue Calypso, LLC v. Groupon, Inc., 815
F.3d 1331, 1352 (Fed. Cir. 2016) (Schall, J., dissenting-in-part), Alvogen argues that the genus-
species framework is not the proper approach to the issue of anticipation by inherency for a
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In order to find that a generic disclosure anticipates a species within a particular genus,
the generic reference must identify the claimed species with “sufficient specificity”; that is, the
reference must express “specific preferences” for one or more particular species or must disclose
a genus that is sufficiently small that the disclosure of the genus effectively describes the species.
See AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1379
(Fed. Cir. 2014); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1380 (Fed.
Cir. 2001); Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006); In re
Petering, 301 F.2d 676, 682–83 (C.C.P.A. 1976). The standard for finding that a prior art genus
anticipates an incorporated species is significantly more restrictive than the standard for
determining whether a prior art genus renders obvious a species that is incorporated within it.
See Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083–84 (Fed. Cir. 2008).
As applied to this case, the genus-species approach requires Alvogen to show that the
Devane reference discloses a sufficiently small genus that a person of skill in the art would “at
once envisage” each member of the genus. See Prometheus Labs., Inc. v. Roxane Labs., Inc.,
805 F.3d 1092 (Fed. Cir. 2015); AbbVie Inc., 764 F.3d at 1379; Wm. Wrigley Jr. Co., 683 F.3d at
1361.
Prometheus addressed the issue of inherency in a patent on the treatment of one of four
types of irritable bowel syndrome, in light of a prior art reference that disclosed the same
treatment for irritable bowel syndrome generally. 805 F.3d at 1098. Although the court found
claim directed to a subset of patients. See Dkt. No. 243, at 13 n.4. In the Court’s view, Judge
Schall did not adopt a different legal approach to the issue of inherent anticipation, but simply
disagreed with the majority that inherency had been shown in that case. See Blue Calypso, 815
F.3d at 1356.
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the claims in that case obvious, it noted that the genus-species framework “may have particular
relevance in the field of personalized medicine” where “[s]ingling out a particular subset of
patients for treatment (for example, patients with a particular gene) may reflect a new and useful
invention that is patent eligible despite the existence of prior art or a prior art patent disclosing
the treatment method to patients generally.” Id.
Similarly, in AbbVie, the patent was directed to the treatment of patients with “active
disease,” which the patentee argued was a narrow species of a broader genus. The Federal
Circuit analyzed the issue of obviousness under that framework. See 764 F.3d at 1378–80.
Although both of those cases addressed the question in the context of obviousness, there is no
reason why that approach is not equally applicable to the issue of inherency in the setting in
which the asserted claims recite treating a subset of patients, and a prior art reference recites
treating patients generally.
Alvogen argues that all opioid drug labels identify a small group of “specific
populations”—such as pregnant women, patients with hepatic impairment, patients with renal
impairment, elderly patients, and so forth. For that reason, Alvogen argues, the group of patients
with hepatic impairment is one of a small number of species within the genus of all patients
disclosed by Devane. Dkt. No. 243, at 13–14 (citing JTX5, JTX65, JTX66, DTX66, DTX27,
DTX67, DTX91).
The Court disagrees with Alvogen’s characterization of the size of the genus in this case.
Regardless of the fact that opioids frequently contain instructions for the treatment of certain
populations, Devane’s genus is very broad. It covers the treatment of any patient, including any
number of special populations that are not regularly described on opioid drug labels. See Trial
Tr. 274:42–25 (Dr. Schmidt testifying that “Devane covers a large population of patients.”).
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The Federal Circuit and its predecessor court have found anticipation of a species by a
genus in this context only when the genus itself is narrowly defined. In VirnetX Inc. v. Apple
Inc., 665 F. App’x 880 (Fed. Cir. 2016), the court affirmed a finding of anticipation where the
prior art disclosed a “computer,” which a person of skill would have understood to refer to either
a desktop or a notebook computer. Id. at 888. In In re Petering, 301 F.2d 676 (C.C.P.A. 1962),
the Federal Circuit’s predecessor court held that a genus that disclosed a “limited class” of 20
compounds rendered unpatentable a patent that recited one of those 20. Id. at 682. And in In re
Schaumann, 572 F.2d 312 (C.C.P.A. 1978), the court found anticipation where the genus of the
prior art reference contained only 14 compounds, which “led inevitably to the conclusion that the
reference provides a description of those compounds just as surely as if they were identified in
the reference by name.” Id. at 314–17. In contrast, the Federal Circuit affirmed a finding of no
anticipation in Lilly–Zenith, where the genus included millions of possible substituents. 471 F.3d
1377.
Devane’s genus includes the treatment of patients with any possible medical condition
and any possible combination of conditions. As such, Alvogen has not established by clear and
convincing evidence that Devane’s disclosed genus is so small that a person of skill would
immediately recognize the “defined and limited class” of the pertinent species of patients with
mild or moderate hepatic impairment as falling within Devane’s genus and thus being anticipated
by Devane’s disclosure.
The parties dispute whether the underlying data from the bunionectomy study described
in Devane supports or undercuts Alvogen’s position. Dr. Gudin testified that he reviewed the
data from the bunionectomy study and found that the study protocol stated that the patients were
in generally good health and that there was no indication that any of the subjects suffered from
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hepatic impairment. Trial Tr. 684:23–687:1. Alvogen argues that Dr. Gudin is incorrect and
that, properly viewed, the bunionectomy study must be regarded as having disclosed the
treatment of patients with hepatic impairment. Dkt. No. 243, at 15–17.
Alvogen’s argument is based on one of the parties’ stipulated claim constructions, which
provided that “mild hepatic impairment” means “the level of hepatic impairment characterized
by Child-Pugh Scores of 5–6 and classified as Child-Pugh Class A.” Dkt. No. 71, at 2. The
Child-Pugh classification system has five different criteria, each scored one through three, with a
score of one indicating the least impaired. Because the lowest possible score on the Child-Pugh
scale is 5, Trial Tr. 85:8–86:7, Alvogen argues that even a completely healthy individual, with no
symptoms of hepatic impairment, would be classified as having mild hepatic impairment under
the Child-Pugh scale. Thus, Alvogen contends that Devane treats hepatically impaired patients
because everyone is hepatically impaired under the Child-Pugh classification system, and thus
under the parties’ construction.
Dr. Gudin’s testimony provides a complete answer to that argument. Dr. Gudin credibly
testified that Child-Pugh scores do not apply to persons with no hepatic impairment because a
physician would not apply the Child-Pugh classification to a person not suffering from some
degree of liver dysfunction. Trial Tr. 676:24–678:4. As Dr. Gudin explained, “it’s illogical to
offer a normal patient a disease category score.” Trial Tr. 677:23–24. Therefore, it is inaccurate
to say that Devane inherently discloses treating patients with mild or moderate hepatic
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impairment on the ground that every one of the patients in the Devane study necessarily had
some degree of hepatic impairment. 9
Finally, to the extent that Devane’s description of the bunionectomy study suggests
anything about the treatment of hepatically impaired patients, it is that the Devane hydrocodone
formulation was not administered to such patients in the course of that study. As Dr. Schmidt
testified, hepatic impairment is a “critical consideration” in clinical study design, “just as if they
were testing elderly patients or they were testing pediatric patients.” As a result, “[t]hat would
have been a special population that they would have called out” in a summary of the study. Trial
Tr. 278:22–279:16. For that reason as well, the Court finds that a person of skill would not have
read Devane as teaching anything about the administration of hydrocodone to patients with
hepatic impairment.
In sum, this is not a case in which “the disclosure of a small genus may anticipate the
species of that genus.” Bristol-Myers Squibb Co., 246 F.3d at 1380. In reciting a “method of
treating pain comprising administering a therapeutically effective amount of” hydrocodone,
Devane recites a genus that includes any and every category of patient, which makes it much
more akin to Lilly–Zenith than to VirnetX, In re Petering, and In re Schaumann. In addition, if a
general method-of-treatment claim were deemed to inherently disclose the treatment of all
possible special populations, no subsequent patent claiming the treatment of a special population
9
As for Pernix’s assertion that none of the patients in the bunionectomy study suffered
from hepatic impairment, the Court observes that the report of the study noted that one subject
exhibited abnormal liver function that was categorized as “mild.” PTX43, at 149. Without
relevant trial testimony, however, that data point is all but meaningless, and it is insufficient to
affect the scope of Devane’s disclosure. See generally Monsanto Tech. LLC v. E.I. DuPont de
Nemours & Co., 878 F.3d 1336, 1346 (Fed. Cir. 2018); Ciba-Geigy Corp. v. Alza Corp., 68 F.3d
487 (Table), 1995 WL 598380, at *2 (Fed. Cir. 1995).
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would ever be valid. A finding of inherency is appropriate only where the claimed invention is
the “natural result flowing from” the prior art. Cont’l Can Co. USA, Inc., 948 F.2d at 1269
(quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Because Devane neither
“necessarily” discloses administration of hydrocodone bitartrate to patients with mild or
moderate hepatic impairment nor identifies such patients with sufficient specificity as a species
within its broad genus, Devane does not anticipate the asserted claims.
D. “Wherein the starting dose is not adjusted relative to a patient without hepatic
impairment”
In addition to the “administering” step, the two-step claims recite a second method step
directed to the level of dosing for patients with mild or moderate hepatic impairment. Because
Devane does not anticipate administering hydrocodone bitartrate to such patients, it also cannot
anticipate a physician administering an unadjusted dose of hydrocodone to such patients.
Alvogen argues that the non-adjustment limitation is an inherent property of Devane’s
extended-release hydrocodone formulation. Dkt. No. 243, at 18. A property such as the
pharmacokinetic profile of a drug in a patient with mild hepatic impairment compared to the
profile in a patient without hepatic impairment may be an inherent property, even if it was not
previously recognized. See Trintec Indus., Inc., 295 F.3d at 1295. However, the non-adjustment
limitation, as construed, is a separate method step that must be performed by the physician. Dkt.
No. 69, at 2 & n.2. A modification of a method of treatment is not a “necessarily present”
property. See, e.g., AstraZeneca, 633 F.3d at 1055. Devane does not disclose the
pharmacokinetic parameters of the hydrocodone formulation in patients with hepatic impairment,
and it does not, as Dr. Schmidt admitted, disclose a recommended, unadjusted starting dose.
Trial Tr. 273:6–19.
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Alvogen further argues that there can “never be a dosage reduction with Devane’s HC-
ER ‘due to’ a patient’s [hepatic impairment]” because the Devane formulation “inherently
provides similar PK [i.e., pharmacokinetic] profiles in patients with and without mild or
moderate [hepatic impairment].” Dkt. No. 248, at 9–10. Alvogen’s argument confuses what is
“medically necessary” with what is “necessarily present,” which is what is required for inherent
anticipation. Even though the pharmacokinetic parameters of the hydrocodone formulation are
inherent, and therefore a dose adjustment due to hepatic impairment would not be medically
necessary to achieve the desired pharmacokinetic profile, there is nothing in Devane that would
suggest not adjusting the proper dose for hepatically impaired patients if the pharmacokinetic
profile of the drug in such patients is unknown.
Finally, Alvogen’s anticipation arguments that are based on prior art other than Devane,
see Dkt. No. 248, at 10–11, are appropriate for an obviousness analysis, but not for anticipation,
as they are directed to what other prior art references disclose and teach rather than illuminating
what Devane itself teaches. See Monsanto Tech. LLC, 878 F.3d at 1346. Accordingly, the Court
finds that the step of not adjusting the starting dose is not inherently disclosed in Devane. The
Devane reference thus does not anticipate either the one-step or the two-step claims of the
patents-in-suit.
III. Obviousness
Obviousness under 35 U.S.C. § 103 is a question of law based on underlying findings of
fact. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The underlying factual considerations
“include the scope and content of the prior art, the differences between the prior art and the
claimed invention, the level of ordinary skill in the art, and any relevant secondary
considerations” of nonobviousness, such as the commercial success of the patented product or
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method, a long-felt but unmet need for the functionality of the patented invention, unexpected
results, industry praise for the patented invention, and the failure of others who have
unsuccessfully attempted to accomplish what the patentee has achieved. Apple Inc. v. Samsung
Elecs. Co., 839 F.3d 1034, 1052–53 (Fed. Cir. 2016) (en banc); Galderma Labs., L.P. v. Tolmar,
Inc., 737 F.3d 731, 736 (Fed. Cir. 2013) (citing Graham, 383 U.S. at 17–18, and KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007)). The obviousness analysis should not be conducted “in
a narrow, rigid manner,” but should instead focus on whether a claimed invention is merely “the
result[] of ordinary innovation,” which is not entitled to patent protection. KSR Int’l, 550 U.S. at
427–28.
“A party seeking to invalidate a patent as obvious must demonstrate ‘by clear and
convincing evidence that a skilled artisan would have been motivated to combine the teachings
of the prior art references to achieve the claimed invention, and that the skilled artisan would
have had a reasonable expectation of success from doing so.’” Bristol-Myers Squibb Co. v. Teva
Pharm. USA, Inc., 752 F.3d 967, 973 (Fed. Cir. 2014) (quoting Procter & Gamble Co. v. Teva
Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)). Although the patent owner bears the
burden of production as to secondary considerations of nonobviousness, the party challenging
the patent bears the ultimate burden of proving obviousness. Galderma, 737 F.3d at 738.
At trial, Alvogen contended that the asserted claims would have been obvious over
Devane in view of one or more of U.S. Patent Publ. No. 2010/0010030 (“Jain”) (JTX38), the
2011 Vicodin label (JTX20), and/or the 2011 Lortab label (JTX15). Jain, a patent application
published in 2010, describes an opioid formulation referred to as Vicodin CR, which was a
controlled-release analgesic that contained 15 milligrams of hydrocodone bitartrate and 500
milligrams of acetaminophen. JTX38 ¶ 34; see Trial Tr. 196:13–21. The Jain application
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describes more than a dozen clinical studies that were conducted using Vicodin CR. See JTX38
¶¶ 88–288. 10 As relevant to this case, Jain describes a hepatic impairment pharmacokinetic study
conducted with Vicodin CR. Jain summarizes those results, reporting that the pharmacokinetic
parameters for hydrocodone in that formulation were “similar” in normal subjects and subjects
with mild or moderate hepatic impairment. JTX38 ¶ 64.
The 2011 Vicodin and Lortab labels describe the safety and dosing instructions for those
drugs, both of which contain hydrocodone and acetaminophen in an immediate-release
formulation. Although both labels state that the product should be “used with caution” in
patients with severe hepatic impairment, the labels are silent about dosing levels for patients with
mild or moderate hepatic impairment. JTX15, at 1; JTX20, at 2. From that silence, Alvogen
argues that a person of ordinary skill would assume that no dose adjustment is required in
prescribing Vicodin, Lortab, or other hydrocodone-containing products, to patients with mild or
Based on the evidence at trial, the Court finds that all of the asserted claims would have
been obvious over the combination of Devane and Jain, particularly in light of the state of the art
that would have been known to a person of ordinary skill, including the Vicodin and Lortab
labels. The Court first addresses (in part III.A) the parties’ submissions regarding the levels of
education and experience that would be expected of a person of ordinary skill in the field. Next,
the Court describes (in part III.B) the state of the art at the time of the patented invention, as
shown by the trial testimony, various contemporaneous journal articles, and the 15 prior art drug
labels that were introduced into evidence. The Court then (in part III.C) addresses the four
10
The FDA did not ultimately approve Vicodin CR for commercial distribution. See
Trial Tr. 297:6–8.
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categories of limitations that cover all of the asserted claims, and finds that each, both separately
and in combination, would have been obvious in light of Devane and Jain. Finally, the Court
addresses (in part III.D) the secondary considerations of nonobviousness raised by the parties
and finds that they do not weigh in favor of finding the asserted claims nonobvious.
A. Person of Ordinary Skill in the Art
The parties largely agree on the education and experience that would characterize a
person of ordinary skill in the art, and the differences between their definitions are not material.
For Pernix, Dr. Gudin testified that he believed a person of ordinary skill in the art would
be
a person or more likely a team of people with either a medical degree or Ph.D.
degree in pharmacy, pharmaceutics, pharmacology, chemistry, or biology, who is
familiar with the literature on hydrocodone and its metabolism as well as hepatic
impairment, having at least two years of practical experience in drug
development, including drug product formulation, or four years of experience if
education is limited to a bachelor’s or Master’s degree.
Trial Tr. 18:16–25.
For Alvogen, Dr. Candiotti testified that a person of ordinary skill would be
a chemist, biochemist, physician, pharmaceutical scientist, physical chemist, or

medicinal chemist involved in the research and development of pharmaceutical
formulations and dosage forms, including but not limited to extended release
delivery systems. A [person of ordinary skill] may also work in consultation with
an M.D. to understand clinical aspects of treating patients with hepatic
impairment.
A person of ordinary skill in the art would have one of the following
combinations of education and experience:
One, a Ph.D. or Pharm.D. in a field related to pharmaceutical formulations
and at least one year of experience in pharmaceutical formulation development.
Two, a similar Master’s degree and at least two to three years of
experience in pharmaceutical formulation development.
Three, a similar undergraduate degree and at least five years of experience
in pharmaceutical formulation development.
Or, four, an M.D. with several years of experience in the treatment of pain
in patients, and the clinical effects of utilizing opioids such as hydrocodone,
particularly in the treatment of pain in hepatically impaired and healthy patients.
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Trial Tr. 112:18–113:18.
The parties’ proposals do not differ in any meaningful way. Moreover, the experts at trial
all testified that the substantive analysis in this case is not affected by the differences between the
two definitions. Trial Tr. 115:3–16 (Dr. Candiotti testifying that “the time [of work experience]
is actually kind of arbitrary” and agreeing that the differences between the two are largely
inconsequential); Trial Tr. 114:10–13 (Dr. Candiotti testifying that applying Dr. Gudin’s
definition of a person of ordinary skill would not have changed his opinion in this case); Trial Tr.
175:8–11 (Dr. Schmidt testifying to the same effect); Trial Tr. 457:11–13 (Alvogen expert Dr.
Michael Laurence Weinberger testifying to the same effect); Trial Tr. 557:7–10 (Alvogen expert
Dr. Michael Mayersohn testifying to the same effect); Trial Tr. 606:14–16 (Pernix expert Dr.
John J. Koleng testifying to the same effect).
The Court finds that the parties’ definitions of a person of skill in the art agree in all
material respects. Based on the parties’ presentations, the Court finds that a person of ordinary
skill in the art would be a person or team of persons with a degree or degrees in the relevant
fields such as chemistry, biology, pharmaceutics, or medicine, and work experience in
formulating or administering pharmaceuticals, as follows: at least one to two years of experience
for a person holding a Ph.D. or M.D.; at least two to four years of experience for a person
holding a master’s degree; and at least four to five years of experience for a person holding a
bachelor’s degree. The most important point here is that under both sides’ proposals, the level of
skill in the art is quite high; a person of skill in the art for purposes of the obviousness analysis is
a person having a high degree of sophistication in the field.
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B. State of the Art
Much of the evidence at trial related to articles and other background references that
describe the proper dosing of opioids in patients suffering from hepatic impairment. Those
references indicate how a person of ordinary skill, who would be familiar with the references,
would have understood the teachings of Devane in combination with Jain, the Vicodin label, and
the Lortab label. For that reason, the Court makes the following detailed findings regarding the
references and the trial testimony from the parties’ experts regarding what a person of ordinary
skill would have understood from those references about the state of the art as of July 2012.
The pertinent references can be divided into four groups. First, there are four background
articles that describe the metabolism of opioids and liver impairment generally. Second, there
are three articles that the parties focused on during the trial that relate to the dosing of
hydrocodone in patients with hepatic impairment. Third, there are seven labels for hydrocodone-
containing drugs, four of which are prior art and three of which post-date the priority date for the
patents-in-suit and thus do not qualify as prior art. And fourth, there are nine opioid analgesics
that do not contain hydrocodone, all of which are prior art. The Court describes each in turn.
1. Background Articles
The parties presented a series of articles that provide background information regarding
the metabolism of opioids, such as hydrocodone. The articles demonstrate that a person of
ordinary skill would have understood that opioids are primarily metabolized by certain enzymes
in the liver, and that hepatic impairment may result in a reduced rate of drug clearance from the
body. The Court makes the following findings with regard to the four articles in the record that
shed light on that issue:
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1. The first is an article by Natasha Chandok, M.D., and Kymberly D. S. Watt, M.D.,
entitled “Pain Management in the Cirrhotic Patient: The Clinical Challenge,” published in the
Mayo Clinic Proceedings in 2010. PTX14. The article, which addresses dosing concerns for
patients with hepatic and renal impairment, explains that “[t]he liver is the main site of
metabolism for most opioids” and cautions that patients with liver problems “have decreased
drug clearance and/or increased oral bioavailability, leading to drug accumulation in the body,
especially with repeated administration.” PTX14, at 4–5. The article also notes that
“[i]neffective drug metabolism in this patient population can also lead to decreased analgesic
action” of hydrocodone and oxycodone. PTX14, at 5. The article recommends a reduction of
dose amount and frequency in patients with liver impairment for both oxycodone and tramadol,
but does not make any recommendation for hydrocodone, although it notes that an active
metabolite of hydrocodone is hydromorphone, for which the article recommends that physicians
“[c]onsider dose reduction in patients with liver impairment.” PTX14, at 5 tbl. 2; see also Trial
Tr. 12:30–13:3, 697:3–6.
2. The second article, written by Roger K. Verbeeck and published in the European
Journal of Clinical Pharmacology in 2008, is entitled “Pharmacokinetics and dosage adjustment
in patients with hepatic dysfunction.” PTX33. The Verbeeck article explains that “[t]he liver
plays a central role in the absorption, distribution, and elimination kinetics of most drugs” and
that “[d]osage adjustment in patients with liver dysfunction is therefore essential for many drugs
to avoid excessive accumulation of the drug, and possibly of active drug metabolite(s), which
may lead to serious adverse reactions.” PTX33, at 1–2. The article mentions opioids only in
passing and does not provide specifics about how to dose opioids in hepatically impaired
patients.
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3. The third background article, by Reem H. Elbekai, et al., is entitled “The Effect of
Liver Cirrhosis on the Regulation and Expression of Drug Metabolizing Enzymes” and was
published in 2004 in Current Drug Metabolism. PTX51. Although the article does not discuss
opioids, it includes a table of 22 other drugs and provides a summary of the effects of liver
impairment on the pharmacokinetic parameters of those drugs. It recommends a dose adjustment
for patients with mild or moderate hepatic impairment for approximately half of those 22 drugs.
PTX51, at 8 tbl.2.
4. Pernix introduced two articles by its expert Dr. Gudin. The first article, entitled
“Opioid Therapies and Cytochrome P450 Interactions” (“Gudin I”), was published in the Journal
of Pain and Symptom Management in December 2012. JTX11. Although the publication date is
after the priority date of the asserted patents, Dr. Gudin testified that he wrote the article in 2011
or early 2012 and “[i]t’s a review article, so there’s no new work in here, and the majority of the
references from this article were from 2011 and before.” Trial Tr. 697:19–698:1. As such, the
information in the article would have been known to a person of ordinary skill as of the July 31,
2012, priority date for the two patents-in-suit. Trial Tr. 698:2–5. The article explains that
because the liver is responsible for most opioid metabolism, “hepatic impairment can
significantly alter the bioavailability of an opioid and its metabolites.” JTX11, at 8. The article
adds that “[d]ose reductions for most opioids may be necessary for patients with hepatic
impairment” and that “[e]xtreme caution is warranted when using any opioid in individuals with
liver disease.” JTX11, at 8. The article recommends that the starting dose of an opioid should
always be the lowest dose, “with appropriate interval titration, especially in the opioid-naïve
patient.” JTX11, at 9.
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5. The Court finds that these articles are representative of some of the knowledge that a
person of ordinary skill would possess as of July 2012. In particular, a person of ordinary skill
would have understood that opioids are metabolized through systems in the liver that can be
impaired in patients with liver dysfunction. If those systems are underperforming and the patient
is given the same dose of an opioid as would be given to a patient without hepatic impairment,
the opioid may not be metabolized quickly enough, which could lead to an overdose of the
opioid. The risk of overdosing would be particularly significant for patients with severe chronic
pain who take opioids with regularity. As such, a person of ordinary skill would be cautious in
dosing opioids for patients with hepatic impairment. In addition, given the potency of opioids as
a class of drugs, a person of skill in the art would have been cautious in recommending anything
more than the lowest effective dose to any patient, regardless of hepatic impairment, but
especially to opioid-naïve patients. See also Trial Tr. 479:13–17.
6. A person of ordinary skill would also appreciate that dosing recommendations are
drug-specific. For example, the table in the Elbekai article lists 10 drugs that are metabolized by
a particular liver enzyme; for half of those drugs, the table recommends a dose adjustment or
titration, and for the other half the table does not recommend a dose adjustment. PTX51, at 8 tbl.
2. The Elbekai table lists two other drugs that are metabolized by another liver enzyme; for one,
the table recommends a dose adjustment for persons with moderate and severe hepatic
impairment; for the other, the table does not recommend a dose adjustment for such patients. Id.
2. Significant Articles Directed to Opioid Dosing
The parties place special emphasis on three articles that were introduced at trial. The
Court makes the following findings regarding these articles:
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1. The first is a second article by Pernix’s expert, Dr. Gudin. That article is entitled
“Risk Evaluation and Mitigation Strategies (REMS) for Extended-Release and Long-Acting
Opioid Analgesics: Considerations for Palliative Care Practice” and was published in the Journal
of Pain and Palliative Care Pharmacotherapy in 2012. PTX55. The article does not discuss
hepatic impairment, but discusses the risks associated with extended-release opioids more
generally. In particular, the article states: “Although improper use of any opioid can cause
oversedation and respiratory depression, this risk is magnified for [extended-release] opioids due
to the large amount of active ingredient contained within one dose, and the extended time to
elimination.” PTX55, at 3. Dr. Gudin, at trial, and Pernix, in its papers, repeatedly emphasized
that sentence from Dr. Gudin’s article. When asked at trial whether the literature supports the
idea that immediate-release products do not have the same risk of overexposure as extended-
release products, Dr. Gudin referred to that passage of his article and explained that a patient
could be exposed to a greater amount of hydrocodone from an extended-release product, so
“there’s a greater risk associated with extended release products.” Trial Tr. 699:14–700:7. In its
post-trial briefing, Pernix relies on Dr. Gudin’s article and testimony in support of its contention
that the dosing of immediate-release products “would not inform dosing with” extended-release
products. Dkt. No. 246, at 13.
2. The Court finds that a person of ordinary skill would not draw the same conclusions
from Dr. Gudin’s article that Pernix draws. The sentence from Dr. Gudin’s article on which
Pernix relies states that the risk of abuse of extended-release opioid products is greater than the
risk of abuse of immediate-release products, because extended-release dosage units contain a
larger amount of the opioid than immediate-release dosage units. Dr. Gudin’s article and his
corresponding testimony, however, do not support the conclusion that an extended-release opioid
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product would present any greater risk of overdose when administered properly. Because Dr.
Gudin’s article addresses opioid abuse, and not the risks of opioids when administered properly,
the Court does not find Pernix’s argument on that point persuasive.
3. The second significant article, entitled “Opioid Metabolism,” by Howard S. Smith,
M.D., was published in the Mayo Clinic Proceedings in July 2009. JTX34. The Smith article
discusses metabolic pathways and dosing instructions for various opioids, including
hydrocodone. In a table, the Smith article summarizes the “Demographic/Medical Factors
Influencing Opioid Metabolism,” including hepatic impairment. JTX34, at 8 tbl.5. The chart
lists nine opioids, including hydrocodone. For four of the nine opioids—morphine, codeine,
oxycodone, and hydromorphone—Smith states that a dose adjustment is recommended for
hepatically impaired patients. Id. For two of the nine—methadone and tramadol—Smith states
that a dose adjustment is recommended, or that the pharmacokinetic parameters are significantly
altered, in patients with severe hepatic impairment, but it does not mention mild or moderate
hepatic impairment. Id. For hydrocodone, Smith states that it is “[m]ost frequently administered
in combination with acetaminophen; liver function monitoring is advised during treatment in
patients with hepatic impairment.” Id. Smith does not state whether a dose adjustment is
required or recommended for hydrocodone. Smith concludes by stating that the “liver is the
major site of biotransformation for most opioids” and that it is “therefore not surprising that the
prescribing information for most frequently prescribed opioids recommends caution in patients
with hepatic impairment.” JTX34, at 8.
4. The parties’ experts disagreed about what a person of ordinary skill would draw from
the Smith article about dosing hydrocodone in patients with mild or moderate hepatic
impairment. Dr. Gudin testified that Smith “could not have” taught anything about how to dose
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an extended-release hydrocodone product to hepatically impaired patients because, at the time
the article was published “there were no extended release single entity hydrocodone products,
and there was no data on dosing in mild to moderate hepatic impairment.” Trial Tr. 711:21–1.
Alvogen’s experts disagreed. Dr. Schmidt noted that Smith “describes a variety of narcotic
related analgesic substances where hepatic dysfunction could influence their action in the body
and provides recommendations for reducing dosing where indicated.” He pointed out, however,
that Smith has no recommendation for reducing doses of hydrocodone based upon mild or
moderate hepatic impairment. Trial Tr. 217:21–218:2. Dr. Weinberger agreed, noting that
“there’s no statement here that any adjustment in dosing needs to be performed in patients with
hepatic impairment.” Trial Tr. 481:20–482:2. Moreover, Dr. Weinberger suggested that Smith’s
caution about monitoring liver function may be due to the toxicity of the acetaminophen in those
combination products, rather than the effect of the hydrocodone on the liver, Trial Tr. 493:24–
495:24.
5. The final significant article, entitled “Opioid Safety in Patients with Renal or Hepatic
Dysfunction,” by Sarah J. Johnson, Pharm.D., was published in the journal Pain Treatment
Topics in 2007. JTX32. The Johnson article is a review article that, among other things, briefly
summarizes dosing recommendations for various opioids. Johnson explains that “[i]n general,
patients with severe liver disease should be prescribed lower doses of opioids, with extended
dosing intervals when multiple daily doses of opioids are needed.” JTX32, at 6 (emphasis
omitted).
6. In a table, Johnson summarizes the “Recommended Use of Opioids in Hepatic
Dysfunction.” JTX32, at 7. For “Hydromorphone/Hydrocodone,” the table recommends: “Use
cautiously and monitor patient carefully for symptoms of opioid overdose.” Id. For patients
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with severe hepatic impairment, the table states that “the parent drug may not be readily
converted to inactive metabolites,” and it recommends “[d]ecrease initial dose by 50% of the
usual amount.” Id. The article’s conclusion states that opioids “should be used cautiously in this
patient population due to possible accumulation of the parent drug and/or metabolites. Usual or
adjusted doses may be appropriate for certain opioids (eg, morphine, hydromorphone,
hydrocodone).” Id.
7. The common specification of the patents-in-suit references the Johnson article, but
misstates what Johnson expressly teaches. After describing the pharmacokinetic parameters of
Devane’s hydrocodone formulation, the specification states that “[a]ny difference due to level of
hepatic impairment is not found to be clinically significant. This is quite surprising and non-
obvious, especially given recommendations in the literature to dose patient with hepatic
impairment at 50% of the normal dose [citing Johnson’s article].” ’760 patent, col. 16, ll. 8–14;
’499 patent, col. 16, ll. 8–14. In fact, however, Johnson recommends a 50 percent dose reduction
only for patients with severe hepatic impairment; the article is silent as to the proper dosing of
hydrocodone for patients with mild or moderate hepatic impairment. See JTX32, at 6–8; Trial
Tr. 209:21–212:13. Dr. Schmidt correctly characterized the discussion of Johnson in the
specifications as “a misinterpretation of Johnson’s recommendation.” Trial Tr. 212:8–13.
8. The parties’ experts disagree about what Johnson reflects as to the state of the art. Dr.
Gudin testified that Johnson did not refer to extended-release hydrocodone products because in
2007 there were no extended-release hydrocodone products on the market. Trial Tr. 707:19–23.
Therefore, Dr. Gudin concluded, Johnson would not have taught anything about how to dose
extended-release hydrocodone-only formulations in patients with mild or moderate hepatic
impairment. Trial Tr. 708:6–11. Dr. Gudin further testified that although the Johnson article
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focused on severe hepatic impairment, a person of ordinary skill in the art would conclude from
the article “that a dose adjustment would be necessary for any patient with hepatic impairment.”
Trial Tr. 710:10–14.
9. Alvogen’s experts disagreed. Dr. Schmidt noted that Johnson offers “some warnings
for some of the other drugs in patients with varying degrees of renal or hepatic impairment,” but
does not recommend a dose adjustment for patients with mild or moderate hepatic impairment,
from which it could be inferred “that these products could be used safely in that population.”
Trial Tr. 209:15–20; see also Trial Tr. 217:21–218:2. Dr. Schmidt admitted, however, that the
Johnson article did not explicitly state how to dose any of the listed products for mild or
moderately hepatically impaired patients. Trial Tr. 291:21–292:1.
10. Dr. Weinberger interpreted Johnson to mean that “dose adjustments [are] only
necessary in severe hepatic impairment” and are not required for a patient with mild or moderate
hepatic impairment when using an extended-release hydrocodone product. Trial Tr. 483:1–5,
486:10–13. However, Dr. Weinberger admitted that Johnson is “painting with broad brush
stroke[s] talking about all opioids.” Trial Tr. 509:4–13.
11. The Court finds that the Smith and Johnson articles demonstrate that a person of
ordinary skill in the art in July 2012 would appreciate that opioids are typically metabolized in
the liver, and that dose adjustments are often required when dosing certain opioids in patients
with hepatic impairment. A person of ordinary skill would have understood that dosing
hydrocodone in patients with hepatic impairment requires caution, and that a dose adjustment
would be required in patients with severe hepatic impairment. Because hydrocodone is often
administered in combination with acetaminophen, which is hepatotoxic, see Trial. Tr. 493:8–
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495:23, a person of ordinary skill would have been particularly cautious in prescribing
combination products containing acetaminophen to hepatically impaired patients.
12. Given the descriptions in Smith and Johnson, the Court finds that a skilled artisan
would not have been able to say with confidence in July 2012 what the proper dosage of
hydrocodone would be for patients suffering from mild or moderate hepatic impairment, or
whether a dose adjustment would be necessary for such patients. Neither Smith nor Johnson
suggests that a physician must always adjust the dose of hydrocodone for patients with mild or
moderate hepatic impairment. In particular, neither Johnson nor Smith criticizes, discredits, or
discourages investigation into whether a dose adjustment would be necessary in administering
hydrocodone to patients with mild or moderate hepatic impairment.
3. Hydrocodone Labels
The parties introduced into evidence the labels from seven hydrocodone-containing
drugs, including four that are in the prior art. The Court makes the following findings regarding
those labels:
1. The four prior art labels are for Vicoprofen (DTX60), an immediate-release
combination product that contains hydrocodone and ibuprofen; for Vicodin (JTX20), an
immediate-release combination product that contains hydrocodone and acetaminophen; for
Lortab (JTX15), an immediate-release combination product that contains hydrocodone and
ibuprofen; and for TussiCaps (DTX65), an extended-release combination product that contains
hydrocodone and chlorpheniramine. The trial evidence shows that the use of hydrocodone as an
analgesic was not a recent development. Vicodin, the most popular of these products, has been
in use for decades, Trial Tr. 181:15–19, and has been the most prescribed opioid and one of the
most frequently prescribed medications in this country, Trial Tr. 444:7–12, 487:23–24.
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2. Each of the four labels contains a precaution against administering the drug to patients
with severe hepatic impairment, and the precautionary language in each label is almost identical.
Each label contains the statement, in a section entitled “Special Risk Patients” that, as with any
narcotic agent or opioid analgesic, the drug “should be used with caution in . . . [patients] with
severe impairment of hepatic or renal function . . . . The usual precautions should be observed
and the possibility of respiratory depression should be kept in mind.” DTX65, at 3; JTX15, at 1;
JTX20, at 2; DTX60, at 5. None of the labels contains a precaution or dosing adjustment
recommendation for patients with mild or moderate hepatic impairment.
3. Dr. Schmidt testified that the fact that there was no mention of mild or moderate
hepatic impairment in any of those four labels “would give you some confidence you could use
the product safely in the same dose with patients with mild or moderate hepatic impairment as
you would use with patients with normal function.” Trial Tr. 205:3–10 (regarding Vicoprofen);
see also Trial Tr. 206:10–17 (regarding TussiCaps), 203:24–204:5 (regarding Lortab), 202:9–21
(regarding Vicodin). Dr. Weinberger agreed: “[T]here’s no indication that any changes in
dosing need to be made for a patient who has mild or moderate hepatic impairment,” and so a
physician would not have adjusted the dose for a patient with mild or moderate hepatic
impairment. Trial Tr. 459:2–23.
4. Dr. Schmidt and Dr. Weinberger acknowledged that none of the four labels contain
pharmacokinetic data indicating how the drug is processed in a patient with hepatic impairment.
See Trial Tr. 268:23–269:4, 487:2–19. Dr. Weinberger explained, however, that the absence of
pharmacokinetic information did not affect his opinion on obviousness, because these drugs were
very popular and Dr. Weinberger knew “of no reports of problems relating to hydrocodone use in
mild or moderately impaired patients. The concern actually about these product[s] was the
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acetaminophen, but not the hydrocodone.” Trial Tr. 487:16–488:3. He concluded, “being the
most commonly prescribed products, I would suspect there would have been information
available if there were [problems] using these substances, these chemicals in patients with mild
or moderate hepatic impairment.” Trial Tr. 488:4–8.
5. Dr. Gudin drew the opposite conclusion regarding the four prior art opioid drugs. He
testified that a person of ordinary skill would have understood that even though the labels of the
four drugs advised physicians to use caution only with reference to patients with severe hepatic
impairment, “we wouldn’t just dose these full dose to . . . patients with mild or moderate hepatic
impairment.” Trial Tr. 694:14–21. Rather, Dr. Gudin testified that in the absence of
pharmacokinetic data a person of ordinary skill would have exercised extreme caution and would
have expected that a dose adjustment would be necessary for patients with mild or moderate
hepatic impairment. Trial Tr. 694:21–696:2.
6. The Court finds that the state of the art in July 2012 was somewhere between the
parties’ two positions. A person of ordinary skill reading the four prior art labels would have
appreciated that a physician could prescribe a hydrocodone-containing product to a patient with
hepatic impairment, and that caution would be necessary, particularly if the patient’s dysfunction
were severe. Given that the labels do not mention patients with mild or moderate hepatic
impairment, however, a physician might reasonably have concluded that it would be safe to
prescribe the same starting dose for such patients as for patients without hepatic impairment.
7. Finally, the parties introduced three labels that are not in the prior art. Those labels
are the 2017 label for Vicodin (PTX74), and the labels for two extended-release hydrocodone-
only products, Hysingla ER (JTX13), which is dated December 2016, and Vantrela (JTX19),
which is dated January 2017. The Vantrela label instructs physicians to initiate therapy at one-
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half the recommended initial dose in patients with mild or moderate hepatic impairment, JTX19,
at 1,7, 21; the Hysingla ER label recommends initiating therapy for patients with severe hepatic
impairment at one-half the initial dose but states that a dose adjustment in starting dose for
patients with mild or moderate hepatic impairment is not required, JTX13, at 7, 19; and the
Vicodin label recommends that physicians “[u]se a low initial dose of hydrocodone bitartrate and
acetaminophen tablets in patients with hepatic impairment and follow closely for adverse events
such as respiratory depression and sedation.” JTX74, at 16. Because all of those three labels
were released years after the priority date for the ’760 and ’499 patents, the Court accords those
references little weight in its obviousness analysis.
4. Non-Hydrocodone Opioid Labels
At trial, the parties introduced evidence relating to nine non-hydrocodone opioid drug
labels, including six unique opioids. Three of the drugs were immediate-release formulations
and six were extended-release formulations. All are in the prior art. The Court makes the
following findings regarding those labels:
1. The immediate-release drugs are Percocet (PTX92), which contains oxycodone and
acetaminophen; Dilaudid (PTX98), which contains hydromorphone as the only active ingredient;
and Opana (PTX103), which contains oxymorphone as the only active ingredient. The Percocet
label states that “[p]recaution should be taken in patients with liver disease.” PTX92, at 1. The
Dilaudid label instructs that “patients with moderate hepatic impairment should be started at a
lower dose and closely monitored during dose titration,” and it advises that “[s]ince the
pharmacokinetics of hydromorphone are affected in hepatic and renal impairment with a
consequent increase in exposure, patients with hepatic and renal impairment should be started on
a lower starting dose.” PTX98, at 4, 13. The Opana label recommends use of the drug “with
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caution and at lower doses” in patients with mild hepatic impairment and states that the drug is
contraindicated in patients with moderate or severe hepatic impairment. PTX103, at 1, 3.
2. The six extended-release drugs are Opana ER, Kadian, Avinza, Exalgo, Nucynta ER,
and OxyContin. The Opana ER label provides the same caution for mild hepatic impairment and
contraindication for moderate hepatic impairment that are found in the immediate-release Opana
label, JTX65, at 1, 5. The labels for Kadian and Avinza, which contain morphine as the only
active ingredient, do not mention mild or moderate hepatic impairment, but state that the drug
should be administered with caution and in reduced dosages in patients with severe hepatic
impairment. DTX67, at 18; DTX27, at 7. The label for Exalgo, which contains hydromorphone
as the only active ingredient, contains data showing a four-fold increase in Cmax and AUC0-inf in
patients with moderate hepatic impairment, DTX91, at 9, and advises physicians to start patients
suffering from moderate and severe hepatic impairment on a reduced dose and to closely monitor
their progress during dose titration, DTX91, at 1, 5. The Exalgo label does not mention mild
hepatic impairment. The 2011 and 2012 labels for Nucynta, which contains tapentadol as the
only active ingredient, both state that no dose adjustment is required for patients with mild
hepatic impairment, DTX66, at 9; JTX17, at 6, but that for patients with moderate hepatic
impairment, treatment should be started at a low dose and the drug should be administered no
more frequently than once every 24 hours, DTX66, at 9; JTX17, at 6. The labels state that total
serum drug concentrations (AUC0-inf) were increased 1.7-fold and 4.2-fold for patients with mild
and moderate hepatic impairment, respectively, and that measurements of the maximum drug
concentration level (Cmax) were increased 1.4-fold and 2.5-fold, respectively. DTX66, at 22;
JTX17, at 26. The 2010 and 2012 labels for OxyContin, which contains oxycodone as the only
active ingredient, describe a hepatic impairment pharmacokinetic study that found AUC levels
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for oxycodone to be 95% higher in hepatically impaired patients as compared with healthy
patients. JTX66, at 26; JTX18, at 26. In light of that information, the labels state that “in the
setting of hepatic impairment, start dosing patients at 1/3 to 1/2 the usual starting dose followed
by careful dose titration.” JTX66, at 17–18; JTX18, at 17.
3. In sum, of the six non-hydrocodone extended-release opioids in evidence, four are
either silent on the dosage for mild hepatic impairment or explicitly state that no adjustment is
required in such patients, while four of the six recommend reducing the starting dose for patients
with moderate hepatic impairment.
C. Obviousness of the Asserted Claims
Alvogen argues that the asserted claims would have been obvious based on Devane in
view of one or more of Jain, the 2011 Vicodin label, and the 2011 Lortab label. The Court
agrees with Alvogen that all of the asserted claims would have been obvious in light of those
prior art references. For convenience, the Court analyzes the obviousness arguments on a
limitation-by-limitation basis. The Court’s conclusion as to obviousness, however, applies to the
claims as a whole and not simply to particular limitations.
1. “Administering . . . [a starting dose of] an oral dosage unit having

hydrocodone bitartrate as the only active ingredient, wherein the dosage unit
comprises an extended release formulation of hydrocodone bitartrate”
Devane discloses the hydrocodone extended-release formulation that was used in the
asserted patents and describes the use of that formulation to treat pain in patients. Devane thus
satisfies the limitation that recites a formulation comprising extended-release hydrocodone
bitartrate in which hydrocodone bitartrate is the only active ingredient. Trial Tr. 195:3–16,
224:18–225:8. Pernix does not dispute that Devane teaches that limitation, which is common to
all of the asserted claims.
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2. Pharmacokinetic Limitations
As discussed above, Devane inherently anticipates the pharmacokinetic limitations
claimed in the patents-in-suit because those pharmacokinetic properties are necessary features of
the Devane formulation. Given the differing legal standards for inherency in the anticipation and
obviousness contexts, however, the question is whether Devane renders the pharmacokinetic
limitations of the asserted claims obvious. The Court concludes that it does.
Alvogen cites Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1354 (Fed. Cir.
2012), for the proposition that an “obvious formulation cannot become nonobvious simply by
administering it to a patient and claiming the resulting” concentrations if those properties were
inherent properties of the formulation. See Dkt. No. 243, at 22. Pernix responds that the
pharmacokinetic limitations would not have been obvious, even if inherently anticipated,
because “obviousness cannot be predicated on what is unknown” and “[w]hat is important
regarding properties that may be inherent, but unknown, is whether they are unexpected.” Dkt.
No. 246, at 16 (quoting In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993), and Honeywell Int’l
Inc. v. Mexichem Amanco Holding, S.A., 865 F.3d at 1348, 1355 (Fed. Cir. 2017)).
On a number of occasions, the Federal Circuit has addressed the very issue presented
here: i.e., whether an inherent property can add patentable weight in the obviousness context.
The Federal Circuit’s cases demonstrate that necessarily present properties, such as the
pharmacokinetic parameters of previously known compositions, do not add patentable weight
when they are claimed as limitations.
In Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186 (Fed. Cir.
2014), the patent at issue claimed methods of using megestrol acetate nanoparticles to “increas[e]
the body mass in a human patient suffering from anorexia, cachexia, or loss of body mass.” Id.
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at 1188 (alteration in original). The claims included limitations about specific food effects, such
as “wherein after a single administration in a human subject of the formulation there is no
substantial difference in the Cmax of megestrol when the formulation is administered to the
subject in a fed versus a fasted state.” Id. at 1194. The district court found, and the Federal
Circuit agreed, that the food effect was not known in the prior art, even though megestrol itself
was well known. Id. The Federal Circuit stated that “the concept of inherency must be limited
when applied to obviousness, and is present only when the limitation at issue is the ‘natural
result’ of the combination of prior art elements.” Id. at 1195 (quoting In re Oelrich, 666 F.2d at
581). Because the district court had not made factual findings that the claimed food limitation
was necessarily present in the prior art combination, the circuit court reversed with instructions
that “the district court [should] determine if TWI has presented clear and convincing evidence
that demonstrates the food effect as claimed is necessarily present in the prior art combination.”
Id. at 1196 (emphasis in original).
As Par Pharmaceutical makes clear, a property such as a food effect or a
pharmacokinetic parameter, when claimed as a limitation, is inherent if it is necessarily present
in the prior art combination. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed.
Cir. 2012) (inherency appropriate in obviousness context where it concerns a “property that is
necessarily present”); In re Kao, 639 F.3d at 1070 (food effect pharmacokinetic limitation is
inherent in obviousness analysis because it is “an inherent property of oxymorphone itself” and
the prior art’s “express teachings render the claimed controlled release oxymorphone formulation
obvious” because “the claimed ‘food effect’ adds nothing of patentable consequence”); Santarus,
694 F.3d at 1354 (“[A]n obvious formulation cannot become nonobvious simply by
administering it to a patient and claiming the resulting serum concentrations. To hold otherwise
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would allow any formulation—no matter how obvious—to become patentable merely by testing
and claiming an inherent property.”); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even
if no prior art of record explicitly discusses the [limitation], the . . . application itself instructs
that [the limitation] is not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in the [claimed invention].”); see also Gen.
Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945) (“It is not invention to
perceive that the product which others had discovered had qualities they failed to detect.”); In re
Oelrich, 666 F.2d at 581 (“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of circumstances is
not sufficient. . . . If, however, the disclosure is sufficient to show that the natural result flowing
from the operation as taught would result in the performance of the questioned function, it seems
to be well settled that the disclosure should be regarded as sufficient.” (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (C.C.P.A. 1939))); Application of Wiseman, 596 F.2d 1019, 1023
(C.C.P.A. 1979) (“They are, in effect, arguing that a structure suggested by the prior art, and,
hence, potentially in the possession of the public, is patentable to them because it also possesses
an inherent, but hitherto unknown, function which they claim to have discovered. This is not the
law.”).
Pernix’s reliance on In re Rijckaert is not well founded, as that case does not involve a
claim limitation that recites a necessarily present property. In Rijckaert, the Federal Circuit
reversed an obviousness rejection based on inherency because the allegedly inherent property
was based on the optimization of the product, not on a necessarily present property that was
found in the prior art. 9 F.3d at 1533–34 (“To support the Board’s affirmance of the rejection,
the Commissioner points out that in the recording art, the exact matching of signal time to
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recording time is an optimal condition, and that this condition would be met by fulfilling the
claimed relationship. While the condition described may be an optimal one, it is not ‘inherent’ in
[the prior art reference]. Nor are the means to achieve this optimal condition disclosed by [that
reference], explicitly or implicitly.”).
Honeywell is similarly inapposite, because that case involved using an unknown but
inherent property as a teaching in an obviousness analysis; it did not involve a limitation that
recites an inherent property. The patent in Honeywell recited a heat transfer composition that
contained at least about 50% by weight of a particular compound and at least one specified
lubricant. 865 F.3d at 1351. The compound was taught by a reference known as Inagaki, but the
patentee argued that Inagaki did not teach combining that compound with the specified lubricant.
Id. The patentee further argued that, because of the unpredictability of finding suitable lubricants
and the unexpected stability and miscibility of the claimed combination, the combination of the
compound and the lubricant would not have been obvious. Id. at 1352. The Patent Trial and
Appeal Board rejected that argument on the ground that the stability and miscibility of the
combination were inherent properties that could not confer patentable weight. Id. The Federal
Circuit reversed, holding that “[w]hat is important regarding properties that may be inherent, but
unknown, is whether they are unexpected.” Id. at 1355. The Board’s obviousness analysis, the
court explained, ignored the unpredictability in the art and erroneously relied on inherent but
unknown properties in finding a motivation to combine. 11
11
The Federal Circuit’s non-precedential decision in Endo Pharmaceuticals Inc. v. Teva
Pharmaceuticals USA, Inc., 731 F. App’x 962 (Fed. Cir. 2018), is not to the contrary. In that
case, the patentee claimed specific controlled-release oxymorphone dosages that were configured
to result in the observed pharmacokinetic properties upon administration. The court explained
that because the prior art “did not give any indication to a person of ordinary skill that
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Pernix does not dispute that the pharmacokinetic parameters recited in the asserted claims
are necessarily present in Devane, because the formulations in Devane and in the patents-in-suit
are identical. Trial Tr. 195:2–16. There was no evidence at trial that the pharmacokinetic
parameter limitations in the asserted claims are either absent from or only sometimes present in
the recited formulations. Accordingly, under the governing precedents, the pharmacokinetic
limitations are inherent in any obviousness combination that contains the Devane formulation.
3. “Administering to the patient having mild or moderate hepatic

impairment”
As discussed above in connection with anticipation, the Court finds that Devane does not
teach administering a formulation comprising extended-release hydrocodone, with hydrocodone
serving as the sole active ingredient, to patients suffering from mild or moderate hepatic
impairment. However, the Court finds that in light of the state of the art, and based on the Jain
patent application, the Lortab label, and the Vicodin label, it would have been obvious to a
person of ordinary skill to administer Devane’s formulation to such patients. The Court makes
the following specific findings on this issue:
1. As the parties agree, a person of skill in the art has a substantial level of educational
achievement and professional work experience, including specialized work experience in the
field of administering or developing pharmaceuticals. The Court finds that such a person would
have been familiar with articles such as those by Johnson and Smith, and would have been
oxymorphone could have been developed into a controlled release formulation providing
effective analgesia over a twelve-hour period, the pharmacokinetic limitations were neither
‘necessarily . . . present’ nor ‘the natural result of the combination of elements explicitly
disclosed by the prior art.’” Id. at 971 (quoting Par Pharm., 773 F.3d at 1195–96). In this case,
by contrast, the formulation recited in the claims was explicitly disclosed by Devane, and the
pharmacokinetic limitations were necessarily present in, and a natural result of the administration
of, that formulation.
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familiar with the opioid drug labels discussed at trial. Based on the literature in the field, such a
person would have appreciated that hydrocodone could be administered to patients with mild or
moderate hepatic impairment. See, e.g., JTX32, at 6–7 (Johnson article, describing hydrocodone
use in patients with hepatic impairment); JTX34, at 8 (Smith article, describing administration of
hydrocodone in patients with hepatic impairment). Even Dr. Gudin’s article makes clear that a
person of ordinary skill would have understood that opioids such as hydrocodone could be
administered to hepatically impaired patients. See JTX11, at 8–9. Although, as Pernix argues, a
person of ordinary skill might not have known with certainty the proper dose to administer to
hepatically impaired patients, that person would have had a reasonable expectation of success in
safely treating pain in such a patient using Devane’s formulation.
2. The Jain, Lortab, and Vicodin references all reinforce this conclusion. All three are
combination products that contain hydrocodone and acetaminophen. All three teach treating
pain in patients with hepatic impairment using such a combination product. The Lortab and
Vicodin labels both include a caution regarding dose levels for patients suffering from severe
hepatic impairment, but are silent regarding dose levels for patients with only mild or moderate
hepatic impairment. JTX15, at 1; JTX20, at 2. Although Pernix’s expert and Alvogen’s experts
disagreed about what a person of ordinary skill would understand the silence of those references
to teach about the proper starting dose for patients with mild or moderate hepatic impairment,
Trial Tr. 202:9–21, 203:24–204:5 459:2–23, 694:14–696:2, no expert testified that those labels
would teach that the product should not be administered to patients with mild or moderate
hepatic impairment. Moreover, Jain’s pharmacokinetic study describes the pharmacokinetic
profiles of hydrocodone in normal subjects and in patients with mild or moderate hepatic
impairment as “similar.” That characterization indicates that a hydrocodone-containing
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extended-release product could be safely administered to a patient with mild or moderate hepatic
impairment. JTX38 ¶ 64. Accordingly, the Court finds that Jain and the Vicodin and Lortab
labels teach that hydrocodone, in a formulation such as Devane’s, could be administered to
patients with that level of hepatic impairment.
3. Pernix argues that there is no motivation to combine Devane, an opioid-only
formulation, with Lortab, Vicodin, and Jain’s Vicodin CR because each of the latter three
formulations is a combination product that contains acetaminophen. Dkt. No. 244, at 27–28;
Dkt. No. 246, at 12–13. The Court finds that the evidence does not support Pernix’s argument,
for four reasons.
First, acetaminophen, unlike hydrocodone, is hepatotoxic. See Trial. Tr. 493:8–495:23.
That would suggest that removing acetaminophen, as in the Devane formulation, would make the
drug safer for patients with hepatic impairment, rather than less safe.
Second, the new drug application for Zohydro ER relied in part on Vicoprofen, an
immediate-release combination hydrocodone/ibuprofen drug, as a reference product. Doing so
allowed Zogenix to rely on some of the Vicoprofen safety and efficacy testing in its new drug
application for Zohydro ER. Trial Tr. 383:17–384:3. Andrew Hartman, one of the named
inventors of the asserted patents, testified that Vicoprofen was chosen as the reference product
for Zohydro ER because the FDA does not allow an applicant to use as a reference an opioid
product with a different active pharmaceutical ingredient. He explained that the FDA does not
permit an applicant to “extrapolate safety data from one molecule to another molecule.” Trial
Tr. 384:12–20. The Court finds the evidence of the FDA’s willingness to accept safety data from
a similar product containing ibuprofen, see Trial Tr. 385:11–15, supports the view that a person
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of skill in the art would not have regarded a combination product containing hydrocodone as
irrelevant to the obviousness of the invention.
Third, a person of ordinary skill in July 2012 would have been motivated to formulate
analgesics that minimized or avoided the use of acetaminophen. In January 2011, the FDA
issued a safety announcement that asked drug manufacturers to “limit the strength of
acetaminophen in prescription drug products, which are predominantly combinations of
acetaminophen and opioids.” 12 The FDA stated that reducing the amount of acetaminophen to
no more than 325 milligrams per tablet, capsule, or other dosage unit, as well as including a
warning on the label, would reduce the risk of severe liver damage associated with
acetaminophen. In the table listing the affected drugs, a number of combination products that
contain acetaminophen and hydrocodone are listed, including various forms of Vicodin and
Lortab.
Finally, and most significantly, a person of skill in the art would have appreciated that
acetaminophen and hydrocodone are metabolized differently, and that acetaminophen would not
12
Food & Drug Admin., FDA Drug Safety Communication: Prescription Acetaminophen
Products to be Limited to 325 mg Per Dosage Unit; Boxed Warning Will Highlight Potential for
Severe Liver Failure (Jan. 13, 2011). The Court takes judicial notice of the FDA’s safety notice
pursuant to Federal Rule of Evidence 201, as it finds that the safety announcement cannot
reasonably be questioned. See Jiten Parikh, RPh, BSPharm, and Kammi Wilson, MA, The
Effects of New FDA APAP Regulations on Pharmacy Practice, Pharm. Times (Sept. 16, 2011)
(describing the January 2011 FDA action); see also Mitchell v. Qualitest Pharm., 187 F. Supp.
3d 831, 832 n.2 (W.D. Ky. 2016) (taking judicial notice of FDA approval of drug label); Stanifer
v. Corin USA Ltd., Inc., No. 6:14-CV-1192, 2014 WL 5823319, at *3 (M.D. Fla. Nov. 10, 2014)
(proper to take judicial notice of public records on FDA’s website); Albrecht v. Fort Dodge
Animal Health, Inc., No. 12-11429, 2013 WL 823325, at *3 n.2 (E.D. Mich. Mar. 6, 2013)
(taking judicial notice of FDA website reflecting approval of product); Peviani v. Hostess
Brands, Inc., 750 F. Supp. 2d 1111, 1116 (C.D. Cal. 2010) (taking judicial notice of FDA
regulatory guideline).
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have had a significant impact on the metabolism or pharmacokinetic profile of hydrocodone.
Trial Tr. 257:1–8. Devane’s description of the results of the bunionectomy study confirms this
understanding. In the study, certain patients were administered an extended-release formulation
containing 10 milligrams of hydrocodone, and others were administered an immediate-release
hydrocodone and acetaminophen combination product, such as Vicodin, also containing 10
milligrams of hydrocodone. Various pharmacokinetic data measurements were then made.
JTX37 ¶ 104. Among the relevant pharmacokinetic parameters were Cmax, which measures the
maximum plasma concentration of the administered drug, and AUC0-inf, which measures the total
exposure to the drug over time. JTX37 ¶ 105; see Trial Tr. 197:15–17, 226:21–11, 229:19–20.
Devane’s Table 9 reports that the mean Cmax was 8.9 ng/mL for the extended-release
hydrocodone formulation, and 19.5 ng/mL for the immediate-release hydrocodone-
acetaminophen formulation. JTX37 ¶ 104. That data is consistent with the difference between
an immediate-release and an extended-release product: an immediate-release product would
release all of the active ingredient at once, resulting in a much higher maximum plasma
concentration, whereas an extended-release product would release the active ingredient slowly
over time, resulting in a lower maximum concentration.
The more relevant parameter is AUC0-inf, because it reflects how quickly the active
ingredient is metabolized. Devane’s Table 10 reports that the mean AUC0-inf for the 10
milligram extended-release hydrocodone product was 136.9 ng * hr/mL, and that the mean
AUC0-inf for the immediate-release hydrocodone/acetaminophen product was 137.6 ng * hr/mL.
JTX37 ¶ 105. Those numbers, as Dr. Schmidt testified, are “virtually identical values.” Trial Tr.
256:12–20. Because the presence of acetaminophen had no appreciable effect on the AUC0-inf
for hydrocodone, a person of ordinary skill would have understood that “acetaminophen is not
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something that would have a significant impact on the metabolism or the pharmacokinetic profile
of hydrocodone.” Trial Tr. 257:1–8. Accordingly, the Court finds that a person of ordinary skill
would not have been deterred from relying on combination products that contain acetaminophen,
such as Jain, Vicodin, or Lortab, in designing an extended-release drug to treat patients with
hepatic impairment based on Devane’s formulation.
4. Most of Pernix’s trial testimony is directed to what the proper dose would be for
patients with hepatic impairment and whether a dose adjustment would be necessary. See, e.g.,
Trial Tr. 693:7–17 (Dr. Gudin testifying that none of the labels for the immediate-release
products included pharmacokinetic data, so they do not teach how to dose an extended-release
hydrocodone formulation in a patient with mild or moderate hepatic impairment); Trial Tr.
695:17–696:2 (Dr. Gudin testifying about the expectation of a person of skill in the art about the
need to adjust the dose). For purposes of these limitations, that evidence is largely beside the
point. Whether or not Jain or the Vicodin and Lortab labels teach precise dosing levels, they
indisputably teach that a hydrocodone-containing product can safely be administered to a patient
with mild or moderate hepatic impairment.
5. Accordingly, the Court finds that a person of ordinary skill in the art, upon reading
Devane, would have had a reasonable expectation of success in administering Devane’s formula
to patients with hepatic impairment based on the state of the art in 2012. The Court further finds
that a person of ordinary skill would have been motivated to combine Devane with the teachings
of Jain and the Vicodin and Lortab labels, and would have reasonably expected that Devane’s
formulation could be administered to hepatically impaired patients.
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4. “Wherein the starting dose is not adjusted relative to a patient without

hepatic impairment”
As discussed with regard to anticipation, Devane does not teach administering to a
hepatically impaired patient a starting dose of a hydrocodone formulation that is not adjusted
relative to a patient without hepatic impairment. Alvogen argues that the non-adjustment
limitation of the two-step claims would have been obvious in light of Devane in combination
with Jain, the Vicodin label, and/or the Lortab label. The Court agrees that, based on the
information in Jain and the Vicodin and Lortab labels, a person of ordinary skill in the art would
have been motivated to administer an unadjusted dose of the Devane formulation to hepatically
impaired patients and would have had a reasonable expectation of success in so doing.
a. Motivation to combine
The evidence at trial shows that a person of skill in the art would have looked to
immediate-release products containing the same active ingredient to determine the proper dosing
levels for extended-release products. As noted, the FDA allowed Zogenix to rely on Vicoprofen,
an immediate-release combination product, as a reference product for safety and efficacy testing
for Zohydro. Trial Tr. 383:17–385:21. The evidence shows that the FDA would not have
permitted the use of a formulation containing a different opioid as a reference product. Trial Tr.
383:17–385:21. 13 And a person of ordinary skill would have appreciated, from Devane’s
13
Similarly, the FDA permitted the Opana immediate-release product label to reference
the pharmacokinetic testing for hepatically impaired patients reported in the Opana ER extended-
release product label, as both formulations contained the same opioid. See, e.g., JTX65, at 17
(Opana ER label, reporting pharmacokinetic data in patients with mild or moderate hepatic
impairment); PTX103, at 12–13 (Opana immediate-release label, referring to the Opana ER
pharmacokinetic study and making dosing recommendations based on that study).
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pharmacokinetic clinical study results, that the acetaminophen in Jain’s Vicodin CR, Vicodin,
and Lortab would not affect the relevant pharmacokinetic parameters for hydrocodone.
As a counterexample, Pernix points to the differences between the 2006 label for
Percocet, which is an immediate-release combination product that contains oxycodone and
acetaminophen, and the 2010 and 2012 labels for OxyContin, which is an extended-release
formulation that contains only oxycodone. Dkt. No. 244, at 28. The Percocet label states that
care should be exercised when oxycodone is used in patients with hepatic impairment, PTX92, at
2, while the OxyContin label contains stronger language, requiring a dose reduction for all
hepatically impaired patients, JTX66, at 17–18; JTX18, at 17.
The Court does not find that the Percocet/OxyContin example detracts from the
motivation to combine, or the expectation of success, that a person of skill would have held in
adapting dosing instructions between immediate-release and extended-release products. Despite
that one contrary example, the overwhelming evidence at trial indicates that a person of skill
would have expected that an immediate-release product would inform the proper dosing for an
extended-release product. 14 The Court therefore finds that a person of ordinary skill in the art
would have looked to immediate-release hydrocodone products, such as Lortab and Vicodin, in
establishing the proper dosing for an extended-release hydrocodone product.
Pernix argues that a person of ordinary skill would not have relied on combination
products for dosing instructions, because the FDA required Zogenix to perform a hepatic
impairment study as part of its new drug application for Zohydro ER and did not allow Zogenix
14
In addition, given that the Percocet label was from 2006 and the OxyContin labels
were from 2010 and 2012, it could be that “there was an opportunity for a lot of new science to
have been developed during that time that would influence that dosing recommendation.” Trial
Tr. 294:6–9.
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to rely on Vicoprofen’s safety information with regard to hepatic impairment. Dkt. No. 244, at
27; Trial Tr. 385:7–387:4, 433:13–22. To the contrary, the fact that Zogenix sought to use
Vicoprofen in seeking approval for Zohydro ER suggests that a person of ordinary skill would
look to combination products to inform the dosing for an extended-release opioid-only product.
The fact that the FDA found the comparison insufficient to satisfy its safety and efficacy
standards does not speak to the issue of obviousness: The standard to find a motivation to
combine is far below what is sufficient to prove safety and efficacy to the FDA, and the Court
does not find that the FDA’s exacting approval requirements undermine the force of the evidence
as to obviousness.
Pernix also argues that a person of skill in the art would not look to Jain based on
unpredictability in the art. For support, Pernix cites the patent examiner’s notice of allowance of
the ’760 patent over the Jain reference. JTX2, at 177. The examiner explained that “various
oxycodone only extended release products are disclosed by Applicants at instant specification
¶¶ 12–16 which do not demonstrate the desired consistent pharmacokinetics. Thus, the
predictability of producing an extended release with only hydrocodone bitartrate as the active
appears to be unpredictable in the art and would thus not lead the skilled artisan to start the
dosage at a dose similar to a normal patient.” JTX2, at 177 (citation omitted); see Trial Tr.
702:11–704:9.
The Court finds that the patent examiner’s stated reason does not support his conclusion:
the differences between oxycodone and hydrocodone may demonstrate some unpredictability in
the art between different opioids, but that is not evidence that one hydrocodone-containing
product could not be used to predict the pharmacokinetic parameters of another hydrocodone-
containing product. Indeed, that is precisely what the FDA did in allowing the use of Vicoprofen
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as a reference drug for some of the safety characteristics for Zohydro ER. Trial Tr. 383:17–
385:15.
For these reasons, and for those described in the immediately previous subsection, the
Court finds that a person of ordinary skill, when considering whether a dose adjustment of
Devane’s formulation would be necessary for patients with mild or moderate hepatic
impairment, would have been motivated to look to Jain and to the Vicodin and Lortab labels for
a guidance as to the appropriate dosing levels of Devane’s formulation for patients with mild or
b. Reasonable expectation of success
The Court also finds that a person of ordinary skill in the art would have had a reasonable
expectation of success in treating hepatically impaired patients with an unreduced starting dose
of an extended-release hydrocodone formulation. Contrary to Pernix’s contention, the evidence
in Devane and Jain, as well as in the Lortab and Vicodin labels, would have provided ample
support for such an expectation. Pernix’s principal argument to the contrary is that the effects of
the extended-release hydrocodone-only formulation in Devane could not have been predicted
absent quantitative pharmacokinetic data, which was not presented in Devane or Jain, or in the
Lortab or Vicodin labels. Dkt. No. 244, at 25–27, 29–30; Dkt. No. 246, at 11–14. The Court,
however, finds that Jain provides sufficient pharmacokinetic data to give rise to a reasonable
expectation that Devane’s formulation would not require a dose adjustment for patients suffering
from mild or moderate hepatic impairment.
The Jain reference describes in detail more than a dozen examples of studies that have
been conducted on the safety and efficacy of Vicodin CR, the controlled-release form of
Vicodin, which contains hydrocodone and acetaminophen. JTX38 ¶¶ 88–288; see, e.g., JTX38
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¶¶ 35, 79–83 (describing two double-blind, placebo-controlled clinical studies, one involving
patients with chronic lower back pain and the other involving patients with osteoarthritis pain,
and detailing adverse reactions); JTX38 ¶¶ 36, 84 (describing a double-blind, placebo-controlled
study on patients following bunionectomy surgery); JTX38 ¶¶ 37, 85 (describing an open-label
safety study, detailing adverse effects); JTX38 ¶ 63 (describing in vitro study of ethanol effects
on Vicodin CR).
Among those studies, Jain describes a study directed to the “effects of hepatic
insufficiency on the pharmacokinetics of Vicodin CR.” JTX38 ¶ 64. Jain describes a study of
24 subjects—eight with normal hepatic function, eight with mild hepatic impairment, and eight
with moderate hepatic impairment—all of whom were given Vicodin CR. Id. The Jain
reference reports that the “mean Cmax and AUC values of hydrocodone were similar” in all the
subjects, while the “[m]ean Cmax and AUC values of acetaminophen were similar in normal
subjects and subjects with mild hepatic impairment, and 34 to 42% higher in subjects with
moderate hepatic impairment.” Id.
The Court finds that a person of ordinary skill would have understood that Jain’s
qualitative statement that the pharmacokinetic parameters for hydrocodone were “similar” means
that a dose adjustment would not be not required for patients with mild or moderate hepatic
impairment. As Dr. Schmidt credibly testified, a person of ordinary skill would have appreciated
that “there was a real clinical study behind this” and that the values were not “brought up out of
thin air.” Trial Tr. 198:20–22. Jain is a published patent application submitted by a reputable
pharmaceutical company, Abbott Laboratories, and it describes more than a dozen studies in
great detail. See JTX38 ¶¶ 88–288. The Court finds that a person of ordinary skill would not
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discount the teachings of Jain’s hepatic impairment study, even though not all of the underlying
quantitative data was set forth in the application.
The fact that Jain reported that the pharmacokinetic parameters for hydrocodone were
“similar” for all three subject groups and that the pharmacokinetic parameters for acetaminophen
were “similar” for normal subjects and those with mild hepatic impairment, while the
acetaminophen parameters were 34 to 42% higher for the subjects with moderate hepatic
impairment, is significant: it indicates that the term “similar” was used to refer to an increase less
than that reported for the acetaminophen parameters in patients with moderate hepatic
impairment. If the increases for hydrocodone had been greater than 34 to 42%, Jain presumably
would have so indicated. It appears that Jain’s summary of the hepatic impairment study notes
only where the increases in serum concentrations were significant enough to give rise to possible
grounds for concern. See Trial Tr. 484:7–485:1. A person of ordinary skill would have
understood that a hepatic impairment study is conducted to determine whether a dose adjustment
is required, and the Court finds that a report of “similar” pharmacokinetic parameters would be
understood to mean that a dose adjustment is not required. Trial Tr. 197:1–198:22, 486:5–23.
The FDA’s guidance on dose adjustments for patients with impaired hepatic function
suggests that a label can state that no dose adjustment is required when the pharmacokinetic
parameters are less than 1.25-fold greater in patients with hepatic impairment than in patients
with normal liver function. A dose adjustment should be recommended, according to the FDA,
when the effect of hepatic impairment is “obvious (e.g., two-fold or greater increase in AUC).”
JTX31, at 10–11; see Trial Tr. 290:21–291:8. A person of ordinary skill would understand from
Devane’s bunionectomy study that the presence of acetaminophen would not have had a
significant impact on the metabolism or pharmacokinetic parameters of hydrocodone. JTX37
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¶¶ 104–05; Trial Tr. 256:21–257:8. Given that Jain suggests that the pharmacokinetic
parameters for the hydrocodone in Vicodin CR are “similar”—i.e., less than 34 to 42% greater—
for patients with mild or moderate hepatic impairment, a person of ordinary skill would
understand that Jain provides, at the very least, a reasonable expectation of success that a
hydrocodone formulation would not require a dose adjustment for such patients.
Pernix argues that even if Jain’s Vicodin CR did not require a dose adjustment, a person
of ordinary skill would not “extrapolate” from that conclusion to Devane’s formulation, which
differs from the Vicodin CR formulation. Dkt. No. 246, at 12–13. That argument, raised for the
first time in the post-trial briefs, is not supported by any trial testimony. In any event, the
argument is undermined by Pernix’s own expert, Dr. Gudin, who testified that a person of
ordinary skill would have looked to various extended-release opioid products that do not contain
hydrocodone in assessing whether there was a reasonable expectation of success. See Trial Tr.
693:7–21. Given that Pernix’s expert would make such a cross-product comparison, the Court
finds that comparing two different extended-release products that contain the same primary
active ingredient would provide a reasonable expectation of success, even if the formulations
were not identical.
Pernix seeks to discredit Jain because the Vicodin CR hepatic impairment study was
neither published nor peer-reviewed. See Dkt. No. 244, at 29; Trial Tr. 701:19–25; see also
PTX57; PTX58. The Court, however, credits Dr. Schmidt’s explanation that the Jain study was
a Phase I clinical study that is not required to be published, see Trial Tr. 198:8–200:1; see also
JTX31, at 10 (FDA publication acknowledging that hepatic impairment studies usually involve a
“small numbers of subjects”). The Court therefore finds no reason to believe that a person of
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skill would discredit the study described in Jain on the ground that the study report was not
published.
Pernix further argues that the silence of the Vicodin and Lortab labels as to the proper
dosing for patients with mild or moderate hepatic impairment does not justify the inference that a
dose adjustment is not required for those patients. Dr. Gudin testified that “it was common
knowledge that clinicians were required to adjust the dose and adjust the starting dose of opioids
when administering these agents to patients with liver issues.” Trial Tr. 12:7–10. Therefore, he
testified, a person of ordinary skill would not read the silence of those labels regarding mild or
moderate hepatic impairment as suggesting that no dose adjustment would be required for such
patients.
The Court does not credit Dr. Gudin’s testimony on that point, as none of the authorities
he cited at trial support his broad conclusion. Trial Tr. 12:14–14:9 (citing PTX14, at 5 (the
Chandok article); PTX33, at 2 (the Verbeeck article); and JTX11, at 8 (the first Gudin article));
see supra sec. III.b.i. Although the Court does not depend solely on the Vicodin or Lortab labels
as teaching that no dose adjustment of hydrocodone is required for patients with mild or
moderate hepatic impairment, those labels, together with Alvogen’s experts’ testimony about the
labels, are consistent with Jain’s teaching. See Trial Tr. 202:9–206:17, 459:2–23.
Pernix contends that a person of ordinary skill would have looked to other extended-
release opioid products, many of which contained pharmacokinetic data, rather than to Jain or the
immediate-release hydrocodone combination products. Dkt. No. 246, 13–15. As described
above, the Court finds that a person of skill, heeding the procedures of the FDA, would have
preferred to look to products that contain the same active ingredient rather than to extrapolate
from different drugs. See Trial Tr. 259:2–10 (Dr. Schmidt testifying that each opioid has
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“different pharmacokinetic properties” so “you cannot extend from one to another with any
degree of expectation that you are going to get it right”); Trial Tr. 478:17–24 (Dr. Weinberger
testifying that a person of ordinary skill “would have understood that each one of these . . .
opioids are different and they’re handled by the body in different ways”).
In any event, however, the evidence regarding extended-release drugs presented at trial
would not have suggested that a reduced dose of a hydrocodone drug would be required for
patients suffering from mild or moderate hepatic impairment. First, the label for TussiCaps,
which is an extended-release hydrocodone product that includes chlorpheniramine, contains no
dosing instruction for patients with mild or moderate hepatic impairment; it includes only a
caution against using the product in patients suffering from severe hepatic impairment. DTX65,
at 3. As Dr. Schmidt testified, the lack of any caution for patients with mild or moderate hepatic
impairment would “give you some confidence that you could use this [at] the same dose level in
patients with mild to moderate hepatic impairment as you would use in a healthy subject.” Trial
Tr. 206:10–17.
Second, the evidence as to non-hydrocodone extended-release opioid products is mixed,
and it does not support Pernix’s position that a person of skill in the art would expect that a dose
adjustment would be required. As described above, four of the six non-hydrocodone extended-
release opioids in evidence are either silent on the dosage for patients with mild hepatic
impairment or explicitly state that no adjustment is required. DTX27, at 6–7; DTX67, at 18;
DTX91, at 1, 5; DTX66, at 9; JTX65, at 5; JTX66, at 17–18. Four of the six are either
contraindicated for or require reducing the starting dose in patients with moderate hepatic
impairment. DTX27, at 6–7; DTX67, at 18; DTX91, at 1, 5; DTX66, at 9; JTX65, at 5; JTX66,
at 17–18. Given this mixed picture, a person of ordinary skill reading Devane and Jain would
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have understood that hydrocodone would be likely to perform more like those drugs that do not
require a dose adjustment than like those that do.
In sum, the Court finds that a person of ordinary skill would have had a reasonable
expectation of success that Devane’s extended-release hydrocodone bitartrate could be
administered to patients with mild or moderate hepatic impairment without adjusting the starting
dose.
D. Secondary Considerations
It is well settled that what the Supreme Court has referred to as secondary considerations,
see KSR Int’l, 550 U.S. at 406, 415—often referred to as “objective indicia”—must be taken into
account in any obviousness analysis, and that such evidence can support a finding of
nonobviousness. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016); Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
2012). The Court finds that, as a whole, the secondary considerations are neutral or entitled to
only minimal weight.
Pernix’s expert Dr. Gudin offered testimony directed to three secondary considerations:
unexpected results, long-felt unmet need, and the failure of others. Trial Tr. 745:8–9. As to
unexpected results, Dr. Gudin testified that a person of ordinary skill “would have understood
that in the face of organ dysfunction like hepatic impairment, patients required a dose adjustment
for safety purposes.” Trial Tr. 745:16–20.
As noted above, Dr. Gudin’s testimony as to unexpected results is not supported by other
evidence adduced at trial. Most significantly, the Jain reference disclosed that an extended-
release hydrocodone could have similar pharmacokinetic properties in both normal and
hepatically impaired patients. Moreover, there were a number of opioid products—both
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hydrocodone products and products based on other opioids—that either did not require a dose
adjustment in some hepatically impaired patients, or were silent on the dosage and did not
expressly require a dose adjustment. DTX66, at 9 (Nucynta ER); DTX60, at 5 (Vicoprofen);
DTX65, at 3 (TussiCaps); JTX15, at 1 (Lortab); JTX20, at 2 (Vicodin); DTX27, at 6–7 (Kadian);
DTX67, at 18, 21 (Avinza); DTX91, at 5 (Exalgo).
Pernix also relies on testimony from the named inventors of the asserted patents that they
expected that Zohydro ER would require a dose adjustment. See Trial Tr. 396:22–397:7 (Dr.
Cynthia Robinson testifying that the results were “unexpected from our perspective”); Trial Tr.
373:10–15 (Andrew Hartman testifying that “we were looking at something novel and
unexpected”); Trial Tr. 412:23–413:12 (Dr. Christopher Rubino testifying that he was
“surprised” by the results of the hepatic impairment study).
The inventors’ assessments, however, were based on a misunderstanding of the teachings
of the articles and drug labels cited in the specification. For example, the common specification
states that the Johnson article teaches that for hydrocodone, “the recommendation was to start
with 50% of the usual dose.” ’760 patent, col. 2, ll. 48–54; ’499 patent, col. 2, ll. 50–56. Later,
in describing the inventors’ discovery that their formulation of extended-release hydrocodone
does not require a dose adjustment, the specification states, citing Johnson’s article, that “[t]his is
quite surprising and non-obvious, especially given recommendations in the literature to dose
patient [sic] with hepatic impairment at 50% of the normal dose.” ’760 patent, col. 16, ll. 10–14;
’499 patent, col. 16, ll. 10–14. As discussed above, however, Johnson states that 50 percent
dosing is required only for patients with severe hepatic impairment; the article is silent as to the
proper dosing of hydrocodone for patients with mild or moderate hepatic impairment. JTX32, at
7; see Trial Tr. 209:21–212:13. Dr. Schmidt testified that the summary of Johnson in the
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patents’ specifications is “a misinterpretation of Johnson’s recommendation.” Trial Tr. 212:8–
13. The specification also describes the dosing recommendation for Nucynta ER, noting that the
label requires a lower dose for patients with moderate hepatic impairment. ’760 patent, col. 3, ll.
28–51; ’499 patent, col. 3, ll. 30–53. The specification, however, omits reference to the portion
of the Nucynta label that specifically states that “[n]o dosage adjustment is recommended in
patients with mild hepatic impairment.” DTX66, at 9.
Moreover, the inventors’ testimony at trial did not address the hepatic impairment study
reported in Jain, and Mr. Hartman, the project manager and team leader for the Zohydro ER
project, testified that at the time of the Zohydro ER hepatic impairment study, he believed the
Zohydro ER study “was the first time that the pharmacokinetics of hydrocodone had ever been
studied in subjects with hepatic impairment.” Trial Tr. 363:7–10. To be probative of non-
obviousness, unexpected results “must establish that there is a difference between the results
obtained and those of the closest prior art, and that the difference would not have been expected
by one of ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva
Pharm. USA, Inc., 752 F.3d at 967. In the absence of evidence that the inventors had adverted to
the hepatic impairment study published by Jain in January 2010, prior to the 2011 Zohydro ER
hepatic impairment study, their testimony about the putatively unexpected results from the
Zohydro ER study is entitled to less weight. For these reasons, the Court finds the inventors’
testimony that they were surprised by the results of the hepatic impairment study does not
provide significant support for Pernix’s position on non-obviousness. 15 In view of all the
15
Evidence of unexpected results typically comes in the form of testimony or other
evidence from experts in the field. See, e.g., Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d
1356, 1368 (Fed. Cir. 2017); Burlington Indus., Inc. v. Quigg, 822 F.2d 1581, 1582–83 (Fed. Cir.
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evidence at trial, the Court finds that a person of ordinary skill in the art would not have found
the results of the Zohydro ER hepatic impairment study to be unexpected, and therefore
concludes that this secondary consideration is, at best, neutral as to the issue of obviousness.
Pernix’s argument that there was a long-felt unmet need for the invention is also not
persuasive. Dkt. No. 244, at 31–32; Trial Tr. 747:14–748:14. The evidence at trial made clear
that several products that did not require a dose adjustment, including some opioid-only
formulations, were available on the market as of July 2012. See, e.g., Trial Tr. 260:20–261:19,
490:23–492:18. Pernix’s evidence on that issue was brief and conclusory in nature. Thus, the
evidence of a long-felt unmet need, such as it was, does not weigh in favor of a finding of
nonobviousness.
Finally, Pernix argues that there was a failure of others to achieve the invention. Pernix’s
evidence on that issue consisted entirely of Dr. Gudin’s testimony that Vantrela, Cephalon’s
hydrocodone extended-release product, requires a dose adjustment for patients with mild or
moderate hepatic impairment. Trial Tr. 748:15–749:1. That single data point, however, does not
stand up against the other evidence at trial. Jain’s Vicodin CR product demonstrates that others
had succeeded in developing hydrocodone-containing products that do not require a dose
adjustment. JTX38 ¶ 64. In addition, Purdue’s Hysingla ER formulation of a hydrocodone-only
extended-release opioid, which was being developed and tested at about the same time as
Zohydro ER, does not require a dose adjustment for patients with mild or moderate hepatic
1987). The inventors’ testimony regarding unexpected results is less compelling, coming as it
does from persons with an interest in the validity of the patent, one of whom (Mr. Hartman) was
not a person of ordinary skill in the art. See Trial Tr. 382:10–383:11. As the Federal Circuit has
noted, unsupported statements by the inventors, including in the specification, “cannot support a
finding of unexpected results.” Tyco Healthcare Grp. LP v. Mut. Pharm. Co., 642 F.3d
1370,1377 (Fed. Cir. 2011).
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impairment. Trial Tr. 785:3–25; JTX13, at 19; see generally DTX7. The development of
Hysingla ER thus undercuts Pernix’s argument about the failure of others. Moreover, the
development of Hysingla ER suggests that there was near-simultaneous invention of a product
having similar properties and similar recognized advantages to the claimed formulations, a factor
that also weighs in favor of a finding of obviousness. See George M. Martin Co. v. Alliance
Mach. Sys. Int’l LLC, 618 F.3d 1294, 1305 (Fed. Cir. 2010). In short, the evidence at trial
relating to objective considerations is of minimal significance and does not offset Alvogen’s
strong showing of a motivation to combine references in the prior art with a reasonable
expectation of success.
IV. Written Description
Section 112(a) of the Patent Act provides, in pertinent part, that the specification “shall
contain a written description of the invention, and of the manner and process of making and
using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use the same.” 35
U.S.C. § 112(a). That portion of the statute embodies both the written description requirement
and the enablement requirement of the Act.
The purpose of the written description requirement is to ensure that the “inventor actually
invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). The written description requirement often becomes an issue in cases
in which a broad genus is claimed and the specification discloses only one or a few species of
that genus. In such cases, the issue is whether the species that were disclosed in the specification
are sufficient to justify a conclusion that the inventor of the species actually invented—and is
entitled to claim—the genus that is recited in the claims.
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The written description problem presented by generic claims “is especially acute with
genus claims that use functional language to define the boundaries of a claimed genus.” Id. In
such a case, “the specification must demonstrate that the applicant has made a generic invention
that achieves the claimed result and do so by showing that the applicant has invented species
sufficient to support a claim to the functionally-defined genus.” Id. Thus, an adequate written
description of a claimed genus requires more than a generic statement of an invention’s
boundaries. Instead, it requires “the disclosure of either a representative number of species
falling within the scope of the genus or structural features common to the members of the genus
so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Id. at 1350
(quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568–69 (Fed. Cir.
1997)). In the chemical or biochemical arts, the written description must “distinguish infringing
compounds from non-infringing compounds, or infringing methods from non-infringing
methods.” Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 926 (Fed. Cir. 2004). If the
disclosed species “only abide in a corner of the genus, one has not described the genus
sufficiently to show that the inventor invented, or had possession of, the genus.” AbbVie
Deutschland GmbH v. Janssen Biotech, Inc., 759 F.3d 1285, 1301 (Fed. Cir. 2014) (AbbVie
Deutschland).
A. Alvogen’s Written Description Defense and Counterclaims
Simply put, Alvogen’s written description defense comes down to this: All that the
inventors contributed to the art was “to recognize that, based on the [pharmacokinetic] results of
a routine [hepatic impairment] study, the HC-ER prior art formulation did not require a dose
adjustment for patients with mild or moderate [hepatic impairment].” Dkt. No. 243, at 4. Rather
than claim only that narrow invention, however, the inventors sought, and obtained, much
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broader claims. Alvogen contends that because the full breadth of the claims is not supported by
the common specification of the two patents-in-suit, the asserted claims are invalid for failure to
satisfy the written description requirement.
As Alvogen observes, the asserted claims are broadly cast in generic form. Pernix argues
that its claims are not generic, but that is clearly wrong. The asserted claims of the two Pernix
patents do not recite methods of treatment involving the use of a particular identified
formulation, or even a group of identified formulations. Instead, the formulation limitations
recited in the claims read on all oral dosage units comprising extended-release hydrocodone in
which hydrocodone is the only active ingredient. That genus of formulations incorporates an
essentially limitless number of formulation species.
The other limitations in the asserted claims are all functional in nature. The functional
limitations include the limitation that the starting dose of the formulation is not adjusted for
persons with mild or moderate hepatic impairment relative to patients without hepatic
impairment (claims 1–4 and 11 of the ’760 patent), as well as the limitations consisting of
particular Cmax or AUC0-inf levels in the release profile of the claimed hydrocodone formulation,
either in absolute terms (claim 11 of the ’760 patent), or relative to persons not suffering from
renal or hepatic impairment (claims 2–4 and 12 of the ’760 patent, and claim 1 of the ’499
patent), or both (claims 17 and 19 of the ’760 patent).
The functional limitations do not inform a person of skill in the art as to what the
formulations must contain in order to exhibit those functional characteristics. Instead, the
functional limitations define the claimed formulations according to whether they end up having
those characteristics when tested. Thus, the claims are largely functional, and the only non-
functional limitations are generic.
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The common specification discloses only one formulation that was found to satisfy all the
limitations of any of the claims, including the functional limitations. That formulation, set forth
in Example 8 of the specification, was the formulation used in both Devane’s bunionectomy
study and the Zohydro ER hepatic impairment study, and it is the only formulation that is shown
by the common specification to satisfy the functional limitations of the claims.
As disclosed in the specification, the Devane/Zohydro ER formulation contained
hydrocodone bitartrate as its sole active ingredient in a mixture of 80 percent extended-release
hydrocodone and 20 percent immediate-release hydrocodone. It also contained various
excipients in prescribed amounts. The claims, however, are not limited to that single disclosed
formulation. Instead, they cover any formulation that satisfies the functional limitations as long
as it contains hydrocodone as the only active ingredient and comprises hydrocodone in extended-
release form (thus permitting, but not requiring, the presence of some amount of hydrocodone in
immediate-release form).
Pernix misses the point when it characterizes this case as involving “a new use of known
compositions.” Dkt. No. 246, at 1. To be sure, Zohydro ER was a known composition, and if
the patentees had limited their claims to a method utilizing that composition, the patents likely
would not have been vulnerable on written description grounds. Instead, they claimed
expansively so as to capture a potentially huge number of compounds, none of which (except for
Zohydro ER) had been shown to satisfy the functional limitations in the claims.
In its briefs, Pernix suggests that the disclosure of the 80:20 ratio of extended-release to
immediate-release components in Zohydro ER distinguishes the claimed embodiments from
other extended-release hydrocodone-only formulations. Dkt. No. 244, at 2; Dkt. No. 246, at 1.
The problem with that argument is that the claims are not limited to compositions having any
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particular ratio of extended-release to immediate-release components; the claims extend far
beyond that, which is what gives rise to the written description problem. 16
This case thus presents the problem highlighted by the Federal Circuit in Ariad, AbbVie,
and Regents of the University of California v. Eli Lilly & Co.: whether the specification provides
a sufficient written description of the claimed subject matter, given that the claims cover subject
matter far beyond the scope of the embodiment described in the specification and do so in largely
functional terms. Alvogen argues that the single embodiment set forth in the specification does
not supply adequate written description support for the asserted claims. Pernix responds that the
common specification describes more than just the single embodiment set forth in Example 8.
Pernix contends that the specification contains several different sets of ingredients for the
immediate-release component hydrocodone solutions and the modified-release coating solutions
in Tables 1 and 2, and that the specification describes nine different dosage levels of the
hydrocodone formulation, between 10 and 80 milligrams. Alvogen replies that there is nothing
in the specification to indicate which, if any, of the formulations using those alternative solutions
and dosages would produce the functional results set forth in the claims, other than the single
16
During closing argument, counsel for Pernix was asked whether the use of the term
“comprising” in the claims indicated that the formulation could contain any amount of the
immediate-release form of hydrocodone, as long as it contained some amount of the extended-
release form of hydrocodone. Counsel for Pernix disagreed that a formulation consisting almost
entirely of immediate-release hydrocodone, with only a small amount of extended-release
hydrocodone, would fall within the scope of the claims, but he did not propose any particular
limits on the percentage of the extended-release form of hydrocodone that would be covered by
the claims. In particular, counsel did not suggest that the claims were limited to formulations
containing 80 percent extended-release hydrocodone and 20 percent immediate-release
hydrocodone, as in Devane. See Dkt. No. 254, at 104:11–109:10. To the extent that counsel’s
argument constitutes a late-blooming claim construction argument, the Court construes the
claims to include hydrocodone-only formulations that contain at least some extended-release
hydrocodone bitartrate, regardless of whether they also contain any immediate-release
hydrocodone bitartrate.
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tested embodiment set forth in Example 8 (the Devane/Zohydro ER formulation). According to
Alvogen, the record reflects that clinical testing would be required in order to determine which if
any of those formulations—or any other of the virtually infinite number of potential formulations
covered by the claims—would produce the functional results recited in the asserted claims.
B. The Evidence
Whether the patentee has complied with the written description requirement is a question
of fact, which the finder of fact must resolve in light of the governing legal standards and the
disclosures and claims of the patents. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 962–
63 (Fed. Cir. 2002); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). In order
to find a claim invalid for failure to satisfy the written description requirement, the finder of fact
must find the written description deficient by clear and convincing evidence. See Hynix
Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1351 (Fed. Cir. 2011); Intirtool Ltd. v. Texar
Corp., 369 F.3d 1289, 1294 (Fed. Cir. 2004).
The evidence at trial regarding written description came mainly from the invalidity
experts, Dr. Mayersohn for Alvogen and Dr. Koleng for Pernix. Dr. Mayersohn testified that the
breadth of the claims was not supported by the common specification, which contained only one
operative embodiment that was known to satisfy the limitations of the claims. Trial Tr. 553:24–
554:5, 562:1–17. The specification, Dr. Mayersohn testified, did not disclose what combination
of components would give rise to the target pharmacokinetic properties in patients with hepatic
impairment other than the single example set forth in Example 8. Trial Tr. 564:8–14. The task
of creating a formulation that would produce similar results for hepatically impaired and normal
patients, he said, would be “a much more difficult challenge.” Trial Tr. 585:16. To determine
what formulations would work, he testified, would require that each candidate formulation be
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tested to see if it met the limitations of the asserted claims. Trial Tr. 561:19–23. He also
testified that the common specification was “totally devoid of presentation of structural or
formulation characteristics that would allow a person of skill to determine a member of a class
such as that described here.” Trial Tr. 563:13–16. That testimony was not contradicted either on
cross-examination or by Pernix’s expert, Dr. Koleng, and the court credits Dr. Mayersohn’s
testimony on those points.
For his part, Dr. Koleng testified that the patents-in-suit provide sufficient information to
allow a person of skill in the art to “envision and make formulations that could yield [the] target
PK properties to practice the invention.” Trial Tr. 609:12–18. He was asked whether, “given the
characteristics that we have discussed in Example 6, in the PK profile for healthy patients and
patients with mild and moderate hepatic impairment in Example 8, one skilled in the art could
envision and readily produce formulations to achieve that profile?” Trial Tr. 614:21–615:1. He
answered in the affirmative, stating that he believed “a [person of ordinary skill in the art] with
the patents in hand could readily envision and make formulations to hit target PK profiles
provided in the patent.” Trial Tr. 615:2–4. He explained that “the drug product formulation can
be envisioned and made to deliver certain PK values when those PK values are known as is the
case here.” Trial Tr. 615:8–12.
Dr. Koleng testified that he did not think a person of ordinary skill in the art would need
to “go through a series of exercises and trial and error to determine if these formulations can be
used [to] practice the claimed method.” Trial Tr. 620:20–25. He explained that a person of skill
in the art would be able to use the examples in the common specification in “formulating a
composition that could be used to practice the claimed invention, mostly targeting PK profiles
and the no dose adjustment.” Trial Tr. 621:3–7.
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Dr. Koleng testified that Example 8 in the common specification “shows that the
inventors actually invented the claimed invention.” Trial Tr. 608:16–19. When a hepatic
impairment test was conducted using that formulation, the pharmacokinetic data showed that
subjects with mild or moderate hepatic impairment did not have unacceptably high levels of
hydrocodone in their systems. For that reason, the inventors concluded that patients with mild or
moderate hepatic impairment could safely be given the same dosage levels of the drug as were
prescribed for patients without hepatic impairment.
According to Dr. Koleng, the disclosures in the specification were not limited to Example
8, the one example for which hepatic testing was conducted, but included 377 other examples of
suitable formulations. He derived that number by multiplying the six different immediate-
release component hydrocodone formulations set forth in Table 1 of the common specification,
by the seven different modified-release coating solutions set forth in Table 2 of the specification,
both of which were lifted verbatim from Devane, and then multiplying that product by the nine
different dosage levels, between 10 and 80 milligrams of hydrocodone, that were listed in the
specification. Trial Tr. 618:15–619:20.
Dr. Koleng further testified that a person of ordinary skill in the art could readily
formulate a composition that could be used to practice the claimed invention. He noted that
Example 3 of the specification contains a short list of potential excipients that could be used in
such a formulation and that Table 1 of the specification contains various components in the
immediate-release formulation that could be used in a mixed immediate-release and extended-
release formulation. Trial Tr. 620:20–622:3, 627:4–15, 628:23–629:4. He added that Example 7
of the specification, which contains the dissolution profile for the Devane formulation, would
provide formulators “with an in vitro target.” Trial Tr. 628:23–629:4. He explained that after
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determining which formulations “would match or conform to the in vitro targets,” an investigator
would regard those formulations as “leading candidates to potential dosing in a PK study” and
could then conduct testing to determine whether “they exhibit PK parameters as well.” Trial Tr.
629:13–16. What was provided in the specification, according to Dr. Koleng, was not merely an
“invitation to conduct research,” but a “target PK profile” to use in studying candidate
formulations. Trial Tr. 629:19–630:1.
Dr. Koleng’s testimony focused on the pharmacokinetic data from the hepatic impairment
test on the Devane formulation and the dissolution rate for that formulation. He did not,
however, point to anything in the specification that disclosed whether any other formulation
would produce pharmacokinetic results equivalent to those discovered in the Devane formulation
testing, or how those results could be obtained. In particular, Dr. Koleng did not point to any
other formulation that would produce similar pharmacokinetic results for normal subjects and
those with hepatic impairment. On cross-examination, he admitted that he would not know
whether a particular formulation would practice the functional limitations recited in the claims
without conducting a hepatic impairment study. Trial Tr. 643:6–11, 646:13–17.
Although Dr. Koleng acknowledged that Example 8 was the only actual embodiment of
the invention set forth in the specification, Trial Tr. 645:19–647:20, he testified that he believed
“that the specification would disclose to a [person of ordinary skill in the art] additional
formulations that could be envisioned and made to test to see if it could be used to practice the
invention.” Trial Tr. 646:9–12. He admitted, however, that with respect to formulations other
than the Example 8 formulation, including the other 377 formulations that he said were disclosed
in the specification, it would be necessary to do a hepatic impairment study for each to determine
if it would satisfy the limitations of the claims. Trial Tr. 653:19–655:15, 660:22–661:22.
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C. The Court’s Findings
Based on the patents and the testimony of Drs. Mayersohn and Koleng at trial, the Court
makes the following findings regarding the written description issue:
1. The non-adjustment and pharmacokinetic limitations of the asserted claims are
functional limitations, in that they describe the results that flow from a particular formulation
rather than setting forth the components that can be used to obtain those results.
2. The claims are all generic in nature, in that they are directed to methods of treating
pain by administering to patients any of an open-ended set of formulations that satisfy either the
non-adjustment or the pharmacokinetic limitations of the various asserted claims.
3. Example 8 in the common specification is a species falling within the genus defined
by the limitations of each of the asserted claims. The common specification does not disclose
any other operative species that was shown to satisfy the functional claim limitations.
4. Example 8 is the formulation disclosed in the prior art Devane reference and is the
formulation used in Pernix’s opioid product, Zohydro ER. The inventors of the ’760 and ’499
patents did not invent the Devane composition, but instead merely determined that Devane’s
formulation has certain pharmacokinetic properties that permit it to be administered to persons
with mild and moderate hepatic impairment at the same dosage level as for persons without
hepatic impairment. They made that discovery after conducting a clinical hepatic impairment
study to obtain FDA approval for Zohydro ER.
5. Example 8 describes the clinical study of the pharmacokinetic effects of Zohydro ER
on subjects with hepatic impairment, as compared to normal subjects. ’760 patent, col. 18, line
25, to col. 19, line 44; ’499 patent, col. 18, line 25, to col. 19, line 44. The example relates the
study results, which showed that the increases in serum concentration of hydrocodone in patients
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with liver dysfunction, as compared to normal patients, were modest. The study reported an
AUC0-inf 10% higher and a Cmax 8% higher in subjects with mild hepatic impairment as
compared to normal subjects, and an AUC0-inf 26% higher and a Cmax 10% higher in subjects
with moderate hepatic impairment as compared to normal subjects. Those differences, according
to the specification, “would not be considered large enough to require dosage adjustment for
patients with hepatic impairment.” ’760 patent, col. 23, ll. 42–44; ’499 patent, col. 23, ll. 42–44.
6. Neither the specification nor any evidence offered at trial points to any structural
features that would assist a person of ordinary skill in the art in identifying species falling within
the asserted generic claims. The pharmacokinetic data and dissolution profile for the Devane
formulation provide no guidance as to whether other formulations would satisfy the functional
limitations of the claims, and the sample components for the immediate release hydrocodone and
modified release coating solutions in Table 1 and Table 2 would contain candidate components
for the formulation, see Trial Tr. 615:13–616:16, but no assurance that any particular formulation
using those components would work.
7. The inventors admitted at trial that they did not know why the Devane formulation
functioned in the way it did, to produce pharmacokinetic results for patients with mild or
moderate hepatic impairment similar to those for patients with normal hepatic function. Trial
Tr. 380:6–11, 401:11–13, 436:20–438:8; see also Trial Tr. 441:1–6 (same testimony by Brooks
Boyd, Zogenix vice-president of development).
8. Dr. Koleng admitted at trial that he did not “consider how specific attributes of
Example 8 or the HC-ER formulation related to the PK results that that formulation generated.”
In particular, he admitted that he was not “asked to opine on what specific special sauce, if you
will, in the formulation resulted in the PK profile.” Trial Tr. 637:18–24. There was no other
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evidence at trial indicating what component or combination of components was responsible for
the pharmacokinetic results obtained from the hepatic impairment study on Zohydro ER.
9. The Court finds that much of Dr. Koleng’s testimony as to background facts is
credible. In particular, the Court accepts his factual description of what was disclosed in the
examples, tables, and figures of the common specification. However, the Court does not credit
Dr. Koleng’s testimony that the specification would provide guidance to a person of skill in the
art regarding how to make a formulation that would satisfy the limitations of the asserted claims,
except for the Devane formulation set forth in Example 8 or compositions closely similar to that
one. His testimony about what was disclosed in the common specification merely shows that the
specification revealed components that could usefully be combined in immediate-release and
extended-release formulations, such as the excipients and the coating components that could be
used in such formulations. Those disclosed components might make the formulation of testing
samples easier, by providing a starting point that had produced one successful formulation. But
what was left undisclosed in the specification was any way of predicting which formulations
would work and which would not. Ultimately, as Dr. Koleng admitted, the only way to
determine which formulations would satisfy the limitations of the claims would be to conduct
hepatic impairment studies. Thus, Dr. Koleng’s statements to the effect that a person of skill in
the art, “with the patents in hand could readily envision and make formulations to hit target PK
profiles provided in the patent,” Trial Tr. 615:2–4, were subject to the considerable qualification
that the task of determining which formulations would work for that purpose would require
clinical hepatic impairment testing of each formulation.
10. The common specification discloses only one formulation that satisfies the
limitations of the claims: the formulation set forth in Example 8 of the specification, which is the
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formulation featured in the prior art Devane reference and which became Zohydro ER. Although
the specification contains references to numerous other components, which can be combined into
many other formulations, none of those other possible formulations were shown to satisfy either
the “non-adjustment” or “PK” limitations of either set of asserted claims. As Dr. Koleng
acknowledged at trial, the only way to determine whether any of those formulations would
satisfy either the non-adjustment or the pharmacokinetic limitations of the asserted claims would
be to conduct hepatic impairment tests on each one.
11. With the exception of Example 8, the “examples” set forth in the common
specification are not really “examples” of the formulations covered by the claims. They consist,
instead, of general descriptions of the kinds of components that can be found in a formulation
such as the one described in Example 8. They describe, for example, dosage ranges for the
hydrocodone component (Examples 1 and 2), a listing of possible inactive ingredients (Examples
2 and 3), and various possible combinations of ingredients for use in the immediate-release
component hydrocodone solution and in the modified-release coating solution (Example 6), and
the dissolution profile of the Example 8 formulation (Example 7 and Figures 7 and 8).
12. With the exception of Example 8, the examples do not indicate that any of the
various formulations would satisfy the pharmacokinetic limitations of the one-step claims or
satisfy the requirement of the two-step claims that reduced dosages of the claimed hydrocodone
formulation would not be required for patients with mild or moderate hepatic impairment.
13. In the end, Dr. Koleng’s testimony about the disclosures in the specification simply
shows that there is a single embodiment, the Devane formulation that became Zohydro ER, that
satisfies the limitations of the claims. The effect of Dr. Koleng’s testimony is that by relying on
the characteristics of the Devane formulation, a formulator could likely produce other similar
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formulations that would fall within the scope of the claims. But all that evidence shows is that
that the inventors had possession of a single species. It does not show that they had possession
of the broad genus covered by the claims.
D. Analysis
Based on the findings set forth above, the Court concludes that the asserted claims of the
’760 and ’499 patents are not supported by an adequate written description, as required by
section 112(a). The specification contains a detailed description of one embodiment, the
Devane/Zohydro ER formulation, together with the test results from the hepatic impairment
study on that formulation and characteristics of that formulation, such as its components and its
dissolution profile. All of that information, however, relates to only a single embodiment within
the broad scope of the claims. While that information could be of use in formulating other
hydrocodone-only formulations, it would provide no guidance as to which of those formulations
would satisfy the functional limitations of the claims and which would not. The Court therefore
finds that the specification fails “to distinguish . . . infringing methods from non-infringing
methods,” Univ. of Rochester, 358 F.3d at 926; it discloses a species that “only abide[s] in a
corner of the genus,” and therefore does not “describe[] the genus sufficiently to show that the
inventor invented, or had possession of, the genus.” AbbVie Deutschland, 759 F.3d at 1301.
Pernix argues that the fact that experimentation would be necessary to determine whether
particular formulations within the claimed genus satisfy the limitations of the claims is not fatal
to the claims on written description grounds. Pernix relies, inter alia, on the opinion of the Court
of Customs and Patent Appeals in In re Fuetterer, 319 F.2d 259 (C.C.P.A. 1963), to support that
contention. Fuetterer, however, is distinguishable on an important ground, which is a theme that
runs through a number of decisions of the Federal Circuit and its predecessor. In Fuetterer, the
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invention related to a tread stock, usable in vehicle tire treads, that would improve the traction of
the treads. The specification described the invention as follows:
In accordance with the present invention, a carbohydrate, a protein, or

mixture thereof, which is insoluble or which is only slightly soluble in cold water
but which forms a colloidal suspension therein, together with one or more
inorganic salts which are effective in maintaining the carbohydrate, protein, or
mixture thereof, in colloidal suspension in the film of water which forms around
the tire tread when the tire engages a wet or icy road or pavement, are
incorporated in a finely divided state in rubber, together with the other
compounding ingredients which have previously been utilized in combination
with rubber, to form the rubber stock for forming the tire tread.
319 F.2d at 260 (footnote omitted).
The Board found that without evidence from testing, the claims were invalid for “undue
breadth” on the ground that the specification did not disclose which inorganic salts would have
that property and that one skilled in the art “would not know offhand which inorganic salts are
capable of so functioning.” Id. at 265. The court reversed, concluding that the applicant did not
need to provide the experimental evidence “necessary to determine the suitability of undisclosed
salts to operate in appellant’s claimed combination,” because the invention was “the combination
claimed and not the discovery that certain inorganic salts have colloid suspending properties.”
Id. at 265 (emphasis added).
This case differs from Fuetterer in a critical respect. In Fuetterer, the invention was not
the discovery of inorganic salts that can maintain carbohydrates, proteins, or a mixture thereof in
colloidal suspension. Instead, the invention was a combination that resulted in a tire tread that is
effective in wet or icy conditions. The specification explained that the manufacturing process
could employ any inorganic salt that maintains a colloidal suspension. In that setting, the court
ruled, it was not essential for the inventor to identify the particular salts that could be effective in
the claimed combination.
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In this case, by contrast, the invention is a method of treating pain that consists of
administering a particular formulation to patients with mild or moderate hepatic impairment.
Identifying the formulation is essential to the invention. Simply saying that the method of
treatment works with a formulation that performs the recited functions does little more than to
say that the method of treatment is effective with a formulation that works. Absent a description
of the class of formulations that will work, as the Federal Circuit stated in Ariad, a patent merely
describes the problem to be solved and claims all solutions to it. Here, the efficacy of the
claimed treatment method depends entirely on whether the particular formulation functions in the
manner recited in the claims. It is therefore critical that the formulation be described with
sufficient specificity to ensure that the inventors have invented the full scope of the formulations
recited in the claims and not simply a single operative embodiment within that class.
In re Herschler, 591 F.2d 693 (C.C.P.A. 1979), also cited by Pernix, presented a similar
issue. In that case, the court found adequate written description support for broad claims for
topically administering a steroidal agent by administering the steroidal agent together with
dimethyl sulfoxide. Even though the specification disclosed only a single example of a steroidal
agent, the court found that the disclosure was sufficient because the claim was drawn to the
method of administering the steroidal agent, and numerous active steroidal agents were known to
persons of skill in the art. Id. at 701. As the court summarized its ruling: “[C]laims drawn to
the [u]se of [k]nown chemical compounds in a manner auxiliary to the invention must have a
corresponding written description only so specific as to lead one having ordinary skill in the art
to that class of compounds. Occasionally, a functional recitation of those known compounds in
the specification may be sufficient as that description. In Fuetterer and here, such is the case.”
Id. at 702. The court noted that “[w]ere this application drawn to novel ‘steroidal agents,’ a
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different question would be posed.” Id. at 701; see also Univ. of Rochester, 358 F.3d at 928
(discussing Herschler).
In Herschler, the invention was the administration of certain physiologically active
substances—in particular, steroids—with dimethyl sulfoxide. Because the steroids were well
known compounds whose precise identity was only “auxiliary to the invention,” there was no
need for the specification to set forth in detail the entire range of species making up the genus of
steroids. In this case, by contrast, the identity of the hydrocodone formulations that would have
a similar effect on subjects with and without hepatic impairment was not known, other than the
one tested formulation described in Example 8 of the specification.
Another case that Pernix relies on, Erfindergemeinschaft UroPep GBR v. Eli Lilly & Co.,
276 F. Supp. 3d 629 (E.D. Tex. 2017) (UroPep), is similar to Fuetterer and Herschler, and is
similarly distinguishable from this case. In UroPep, the asserted claims were to the method of
using a selective inhibitor of the enzyme PDE V to treat benign prostatic hyperplasia (“BPH”).
Critically, the invention in UroPep was not a method for inhibiting PDE V, but a method for
treating BPH by using selective PDE V inhibitors, which were well known in the pharmaceutical
arts. While the invention in the present case entails the use of certain hydrocodone formulations
that affect patients with and without hepatic impairment similarly, what is missing from the
patent in this case is a description of what distinguishes the hydrocodone formulations that
function in that manner from those that do not. The invention in UroPep was not the
identification of particular PDE V inhibitors, but the use of a class of compounds, known to have
that inhibiting feature, for a particular therapeutic purpose. The UroPep case therefore did not
present the problem presented in the University of Rochester case and in this case, of an inventor
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seeking claim coverage for a broad genus of compounds that perform a particular function, while
only disclosing a small subset of such compounds.
Pernix also relies on Monsanto Co. v. Scruggs, 459 F.3d 1328 (Fed. Cir. 2006);
Invitrogen Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1073-74 (Fed. Cir. 2005); and
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003). The facts of those
cases, however, contrast sharply with the facts of this one in a way that underscores the written
description problem with Pernix’s patents. In each of those cases, the court found that given the
state of knowledge in the art, the disclosure provided sufficient support for the claims. In
Monsanto, the court held that it was unnecessary for the patentee to include specific DNA
sequences when referring to the CaMV 35S promoter, since “those of ordinary skill in the art
knew the DNA sequences of several strains of the CaMV virus, the location of the CaMV
promoters, and the DNA sequences for several CaMV 35S promoters.” 459 F.3d at 1337.
Similarly, in Invitrogen, the court upheld the district court’s determination that the disclosure in
the specification was sufficient because “the sequences of RT genes were known and members
of the RT gene family shared significant homologies from one species of RT to another.” 429
F.3d at 1073. And in Amgen, the court observed that the written description requirement can be
satisfied “if in the knowledge of the art the disclosed function is sufficiently correlated to a
particular, known structure,” which the court found to be true in that case. 314 F.3d at 1332.
Moreover, the Amgen court found that the undisclosed matter pertained to a different method of
making the claimed compositions, not to the invention claimed. Id. at 1333. In this case, by
contrast, there was nothing in the state of the art as of July 2012 that would have provided
guidance as to which of the broadly claimed formulations would work and which would not,
with the exception of the single embodiment described in Example 8.
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The Federal Circuit’s decision in AbbVie Deutschland illustrates the difference between
the cases on which Pernix relies and this case. The claims in AbbVie Deutschland were drawn to
isolated antibodies that would neutralize the activity of human interleukin 12, and the patent
purported to teach how to make such antibodies. The examples given in the patent, however,
were limited to certain species of the claimed antibodies, and the specification did not disclose
structural features common to the members of the claimed genus of antibodies. 759 F.3d at
1299. Under these circumstances, which closely resemble the circumstances of this case, the
Federal Circuit held that the written description requirement was not satisfied.
A particularly important Federal Circuit precedent for this case is In re Alonso, 545 F.3d
1015 (Fed. Cir. 2008). In that case, the Federal Circuit upheld a decision of the Patent and
Trademark Office Board of Patent Appeals and Interferences holding an invention unpatentable
for failure to satisfy the written description requirement. The Federal Circuit’s decision in that
case answers several of Pernix’s arguments regarding the written description requirement.
First, Alonso answers Pernix’s argument that the claims in the asserted patents do not run
afoul of the written description requirement, because they are directed to methods of treatment
and not to the formulations that are used in those methods of treatment. The claim at issue in
Alonso, like the claims in this case, involved a method of treating a particular disease by
administering an effective amount of a particular type of antibody.
Second, Alonso answers Pernix’s argument that certain written description decisions of
the Federal Circuit do not apply because in those cases the specification contained no disclosed
embodiments of the generic claims. In the Alonso case, as in this case, the specification
contained an embodiment of the claims, thus showing that a failure to satisfy the written
description requirement is not limited to cases in which there are no disclosed embodiments. See
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also LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005);
Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004); Enzo, 323 F.3d at 969; Regents of the Univ.
of Cal., 119 F.3d at 1568. Indeed, the court in Alonso rejected Alonso’s effort to distinguish his
case from the Federal Circuit’s decision in University of Rochester on the ground that he had
reduced his method to practice and identified the resulting compound, while the inventors in
University of Rochester did not disclose any operative embodiments of the invention.
Third, Alonso answers Pernix’s related argument that the single embodiment disclosed in
the specification was sufficient to support the broad generic claims. As in this case, the
specification in Alonso disclosed only a single species of the genus of claimed antibodies, which
the court found “cannot be said to be representative of a densely populated genus.” 545 F.3d at
1021. Even though the specification disclosed a species of the genus, the court in Alonso found
the written description insufficient to satisfy the written description requirement for claims
directed to the genus.
To be sure, the fact that some testing may be necessary to determine, for example, the
effective dose of a claimed drug, is not fatal to the validity of a claim challenged on written
description grounds. See Takeda Pharm. Co. v. Impax Labs., Inc., No. C-11-1610, 2013 WL
2384240, at *17 (N.D. Cal. May 30, 2013). In this case, however, the evidence showed that
testing would be necessary to decide which, if any, formulation within the genus would produce
pharmacokinetic values in hepatically impaired patients roughly similar to the pharmacokinetic
values obtained in normal patients. Given that the testing results would be fundamental to
determining which formulations would satisfy the asserted claims, it is apparent that, in the
absence of such testing data, the inventors cannot be said to have possessed the full scope of the
claimed invention. All that the specification discloses is that one such formulation will work for
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that purpose. Whether any others will work, and which they are, would depend entirely on
testing, and thus cannot be said to have been within the scope of what the patentees invented.
Pernix repeatedly emphasizes that the specification of its patents shows a specific method
that works. What Pernix fails to acknowledge, however, is that it has claimed not just the
formulation disclosed in the common specification, but any formulation that will work to
produce the results recited in the claims, i.e., pharmacokinetic profiles for subjects with mild or
moderate hepatic impairment that are close to those for normal patients.
Therein lies the written description problem: the claims are far broader than the
disclosure. As the Federal Circuit put the matter in Ariad, the claims are defective because they
“cover any [formulation] later actually invented and determined to fall within the claim’s
functional boundaries—leaving it to the pharmaceutical industry to complete an unfinished
invention.” 598 F.3d at 1353. In short, what was claimed did not correspond to what was
described. Alcon, 745 F.3d at 1191.
In that respect, this case is akin to Novozymes A/S v. DuPont Nutrition Bioscience APS,
723 F.3d 1336 (Fed. Cir. 2013). In that case, as in this one, the specification was very broad,
providing “only generalized guidance listing several variables that might, in some combination,
lead to a useful result.” Id. at 1346. The court held that the written description requirement was
not satisfied. In response to Novozymes’ argument that a person of skill in the art would have
known how to test all of the possible variants within the scope of the invention as described, the
court ruled that to possess the embodiments within the general scope of the specification “would
have required Novozymes to confirm its predictions by actually making and testing individual
variants or at least identifying subclasses of variants that could be expected to possess the
claimed properties.” Id. at 1350. The same is true here.
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In its post-trial response brief, Pernix makes a final argument that Alvogen failed to elicit
evidence at trial “about any ER hydrocodone formulation that could be used in the claimed
method besides HC-ER [the tested Devane formulation].” That failure is fatal to Alvogen’s
written description argument, according to Pernix, “because Alvogen has no evidence—let alone
clear and convincing evidence—that: (1) species falling within the ‘genus’ differ from those in
the patents, and (2) a [person of ordinary skill in the art] could not envision those undisclosed
species.” Dkt. No. 246, at 4–5.
The Court rejects that argument. The problem with the claims is that the specification
provides no basis for believing that all species falling within the genus display the functional
features of the single embodiment that was tested for those features. Nothing in the specification
would indicate to a person of skill in the art which, if any, of those species, i.e., all oral dosages
of hydrocodone-only formulations containing at least some of the hydrocodone in extended-
release form, would satisfy the functional limitations of the claims. As the Federal Circuit stated
in University of Rochester, the written description must allow a person of ordinary skill in the art
to “distinguish infringing compounds from non-infringing compounds, or infringing methods
from non-infringing methods.” 358 F.3d at 926. A patentee may not disclose only a particular
species and “leav[e] it to others to explore the unknown contours of the claimed genus.” AbbVie,
759 F.3d at 1300.
To the extent that Pernix means to argue that the claims, even though broadly worded,
may actually cover only one embodiment—Zohydro ER—and that Alvogen’s written description
challenge fails because Alvogen has not adduced evidence that there are any other operative
species within the genus of formulations covered by the claims, the Court rejects that argument.
A patentee may not draft claims that are sweepingly broad and then defend against a challenge to
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their breadth by pointing out that the challenger has failed to show that there are any operative
embodiments within the broad scope of the claims other than those that were specifically
disclosed in the specification. To sustain patent claims on that ground would permit a patentee
to “attempt to preempt the future before it has arrived,” Fiers v. Revel, 984 F.2d 1164, 1171
(Fed. Cir. 1993), and then be rewarded in that effort if the challenger cannot point out exactly
how the future will unfold.
What Pernix is asking the Court to do is, in effect, to narrow the scope of the claims to
cover only the embodiment disclosed in the specification. As the Federal Circuit pointed out in
Alcon Research, Ltd. v. Apotex Inc., in response to a similar argument: “This is not how patent
law works. . . . [Y]ou can’t simply disavow the invalid portion and keep the valid portion of the
claim. . . . Courts do not rewrite the claims to narrow them for the patentee to cover only the
valid portion.” 687 F.3d at 1368. In any event, the evidence indicates that Purdue’s Hysingla
ER formulation, which does not require a dose adjustment for patients with mild or moderate
hepatic impairment, satisfies the asserted claims while containing a formulation different from
that in Pernix’s Zohydro ER. Trial Tr. 785:5–19, 794:6–797:9. Moreover, the record contains
evidence of another extended-release hydrocodone-only formulation that, according to Pernix’s
expert, was shown by testing not to satisfy the pharmacokinetic limitations of the claims. See
’760 patent, col. 2, ll. 56–67; ’499 patent, col. 2, line 58, to col. 3, line 2; JTX8; Trial Tr. 667:6–
16. That evidence demonstrates that products satisfying the formulation limitations of the claims
might satisfy the pharmacokinetic limitations, but would not necessarily do so.
For the reasons stated, the Court finds, by clear and convincing evidence, that the
disclosures of the ’760 and ’499 patents fail to provide an adequate written description of the
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inventions set forth in the asserted claims, as required by 35 U.S.C. § 112(a), and that the
asserted claims are therefore invalid.
Judgment will be entered in accordance with the foregoing Findings of Fact and
Conclusions of Law.
IT IS SO ORDERED.
SIGNED this 24th day of August, 2018.
_____________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
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Case: 18-2361 Document: 26 Page: 1 Filed: 11/09/2018

United States Court of Appeals

PERNIX IRELAND PAIN DAC, PERNIX THERAPEUTICS, LLC,

ALVOGEN MALTA OPERATIONS LTD.,

On Appeal from the United States District Court for the

BRIEF FOR PLAINTIFFS-APPELLANTS

Therapeutics, LLC certifies the following:

1. The full name of every party or amicus represented by me is: Pernix

Ireland Pain DAC and Pernix Therapeutics, LLC.

Daniel M. Silver, Benjamin A. Smyth, and Michael P. Kelly (McCarter &

English, LLP); David G. Varghese and Christopher J. Stankus (formerly

Fitzpatrick, Cella, Harper & Scinto).

Dated: November 9, 2018 /s/ Dominick A. Conde

Counsel for Plaintiff-Appellants

Jurisdictional Statement ............................................................................................. 1

Preliminary Statement ................................................................................................ 2

Statement of the Issues............................................................................................... 5

I. Proceedings Below .......................................................................................... 6

II. Statement of Facts............................................................................................ 6

Summary of the Argument....................................................................................... 12

Obviousness Argument ............................................................................................ 18

A. The conclusion that there was motivation to use an

B. The conclusion that there was a reasonable expectation of

C. The District Court’s written description findings are

D. The District Court erred by relying on Jain and/or the

1. The District Court legally erred in its analysis of

a. The District Court legally erred by relying

b. As a matter of law, an untested hypothesis is

c. The District Court wrongly dismissed the

c. Jain is legally insufficient to show

3. The District Court legally erred by substituting its

E. The District Court legally erred by finding that the PK

1. The District Court erred by disregarding

2. The District Court erred by discounting

3. The District Court erred by misinterpreting the

Written Description Argument ................................................................................ 44

C. Unclaimed structures and properties are relevant to

IV. Fuetterer and Herschler are not distinguishable. .......................................... 54

VI. The District Court relied on inapposite case law. ......................................... 62

Alcon Research Ltd. v. Barr Labs., Inc.,

Alza Corp. v. Mylan Labs., Inc.,

Amgen Inc. v. Hoechst Marion Roussel, Inc.,

Amgen Inc. v. Sanofi,

Apple Inc. v. Motorola, Inc.,

Ariad Pharm., Inc. v. Eli Lilly & Co.,

Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,

Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc.,

Creative Compounds, LLC v. Starmark Labs.,

In re Cyclobenzaprine Hydrochloride Extended Release Capsule

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,

Fromson v. Advance Offset Plate, Inc.,

Insite Vision, Inc. v. Sandoz, Inc.,

Lizard Tech Inc. v. Earth Resource Mapping, Inc.,

Lochner Techs., LLC v. Vizio, Inc.,

Merck Sharp & Dohme B.V. v. Warner Chilcott Co., LLC,

Novozymes A/S v. DuPont Nut. Bio. APS,

Pernix Ir. Pain DAC v. Alvogen Malta Operations Ltd.,

Perricone v. Medicis Pharm. Corp.,

Rexnord Corp. v. Laitram Corp.,

Sanofi v. Watson Labs. Inc.,

Star Sci., Inc. v. R.J. Reynolds Tobacco Co.,

Stratoflex, Inc. v. Aeroquip Corp.,

Tyco Healthcare Grp. LP v. Mut. Pharm. Co.,

Union Oil Co. of Cal. v. Atlantic Richfield Co.,