Judge Richard G. Andrews recently issued an opinion construing claim terms relating to dutasteride, a compound claimed by the plaintiff’s ‘427, ‘467, and ‘976 patents. GlaxoSmithKline LLC v. Anchen Pharmaceuticals, Inc., et al., C.A. No. 11-046-RGA (D. Del. Nov. 15, 2012). As the Court explained, dutasteride is a compound used to inhibit the conversion of testosterone to dihydrotestosterone—a compound that can cause enlargement of the prostate. Id. at 2. The parties disagreed on the proper construction of two claim terms.
The Court construed the claim term “solvate thereof” in the ‘467 and ‘976 patents to mean “a complex formed by dutasteride with a solvent in which dutasteride is reacted or from which it is precipitated or crystallized.” Id. at 4. With respect to the ‘427 patent, the same term was construed to mean “a complex formed by a compound of formula (I) (as defined in claim 1) with a solvent in which that compound is reacted or from which it is precipitated or crystallized.” Id. These constructions adopted the proposals made by the plaintiff, which the Court found to be consistent with the patentee’s definition of “solvate” in the specification–a definition that, the Court explained, trumped the defendants’ extrinsic evidence suggesting that a different construction was appropriate. Id. at 8.
The Court next construed the claim term “pharmaceutically acceptable” as used in all three patents to mean “suitable for use when administered to the recipient thereof as a pharmaceutical.” Id. The Court adopted neither the plaintiff’s nor the defendants’ proposed constructions of this term, and instead fashioned its own construction based on its reading of the claims and specification. Id. at 10.
Delaware IP Law Blog 