N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ APTALIS PHARMATECH, INC., IVAX INTERNATIONAL GMBH, Plaintiffs

- Appellees

v.

APOTEX INC., APOTEX CORP., Defendants

- Appellants

______________________

2017

- 1344

______________________ Appeal from the United States District Court for the District of Delaware in No. 1:14

- cv

- 01038 -SLR- SRF, Judge Sue L. Robins on.

______________________

Decided: January 4, 2018

______________________

J OHN R. L ANE , Fish & Richardson, PC, Houston, TX, argued for plaintiffs

- appellees. Also represented by S USAN E. M ORRISON , Wilmington, DE; J ONATHAN E LLIOT S INGER , San Diego, CA.

W ILLIAM R. Z IMMERMAN , Knobbe, Martens, Olson & Bear, LLP, Washington, DC, argued for defendants

appellants. Also represented by T HOMAS P. K RZEMINSKI ; K

AREN M ARIE C ASSIDY , C RAIG S. S UMMERS , Irvine, CA.APTALIS PHARMATECH , INC

. v. APOTEX INC

. 2

______________________
Before R EYNA , W ALLACH , and S TOLL , Circuit Judges

. S TOLL , Circuit Judge

. In this Hatch

- Waxman case, Apotex Inc. and Apotex Corp

. appeal from the district court’ s claim construction of “extended release coating” and its finding that Apotex’s product infringes U.S. Patent Nos. 7,790,19 9 and 7,829,121. We conclude that the district court erred by not construing the term “ extended release coating ” to require a continuous outer film, as taught by the intrinsic evidence. Accordingly, we vacate the infringement fin ding and remand for further proceedings.

I. The goal of a drug delivery system is to achieve rapidly a therapeutically effective concentration of drug in the body and to maintain that concentration throughout the
treatment period

. When a patient swallows a tablet, gastrointestina l fluids dissolve the drug inside the tablet

, and the drug is absorbed into the body. In a n immediate release formulation , the majority of the drug dissolve s within an hour because the tablet disintegrates once it is swallowed

, and the body’s gastrointestinal f luids contact and dissolve the drug. Therefore, patients seeking co ntinuous relief from their symptoms must take an immed iate release formulation several times per day.

An e xtended release formulation, as its name implies, can sustain therapeutically effective drug concentrations over a prolonged period by releasing the drug at a slower
rate. These formulations employ controlled release mat erials that surround the drug and create a barrier through which gastrointestinal fl uids must travel to access the drug , or “active” substance

. The controlled release mat erial decreases the rate at which gastrointestinal fluids penetrate the tablet to dissolve the drug and the rate atAPTALIS PHARMATECH , INC

. v. APOTEX INC

. 3

which the dissolved drug escapes the tablet to be abs orbed into the body.
Aptalis Pharmatech, Inc. and Ivax International GmbH own the ’199 and ’121 patents (collectively, the “asserted patents”) , which relate generally to extended release dosage forms of cyclobenzaprine hydrochloride, a skeletal muscle re laxant

. 1 Instead of requiring three daily doses of cyclobenzaprine, as in the prior art, the asserted patents disclose an extended release cyclobe nzaprine formulation that provides twenty

- four hour relief from muscle spasms with a single dose.
The asserted patents teach two different formulations that use a water insoluble polymer coating to achiev e an extended release profile. The parties refer to these alte rnatives as membrane systems and matrix systems

. In a membrane system, a water insolub le polymer coating is applied onto a n active

- containing core: The active core of the dosage form of the present invention may comprise an inert particle such as a sugar sphere, or an acidic or alkaline buffer crystal, which is coated with a skeletal muscle relaxant such as cyclobenzaprine

. . . . The drug layered beads may be coated with a protective seal coating of OPADRY ® Clear to produce IR [immediate release] Beads.

. . . ER [extended release] Beads can be produced by applying a functional membrane comprising a water insoluble polymer alone or in combination with a water soluble polymer onto IR Beads.

1 The asserted patents share a common specific ation, and unless otherwise noted, all citations are to the ’199 patent.APTALIS PHARMATECH , INC

. v. APOTEX INC

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’199 patent col. 3 l. 67 – col. 4 l. 17. In a matrix system, the water insoluble polymer is mixed together with the drug and compacted into a tablet:
[T]he drug substance, optionally a binder such as PVP, a dissolution rate controlling polymer (if used), and optionally other pharmaceutically a cceptable excipients are blended together in a planetary mixer or a high shear granulator such as Fielder and granulated by adding/spraying a granulating fluid such as water or alcohol. The wet mass can be extruded and spheronized to produce spherical particles (beads) using an e xtruder/marumerizer.

Id. at col. 6 ll. 23

– 31. Although the specification discloses tw o different e xtended release formulations, t he claims are not expressly limited to a specific formulation by name (i .e., “ membrane system” or “ matrix system ”), as demonstrated by r epr esentative claim 1 :

1. A pharmaceutical dosage form comprising

a population of extended release beads, wherein said extended release beads comprise:

an active

- containing core particle comprising cyclobenzaprine hydrochloride as the active; and
an extended release coating comprising a w ater insoluble polymer membrane surrounding said

core , wherein said water insoluble polymer me mbrane comprises a polymer selected from the group consisting of ethers of cellulose, esters of cellulose, cellulose acetate, ethyl cellulose, polyv inyl acetate, neutral copolymers based on ethyl

a crylate and methyl methacrylate, copolymers of acrylic and methacrylic acid esters with quate rnary ammonium groups, pH

- insensitive ammoni oAPTALIS PHARMATECH , INC

. v. APOTEX INC

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methacrylic acid copolymers, and mixtures ther eof;
wherein the total amount of cyclobenzaprine hydrochloride in the pharmaceutical dosage form is 30 mg; wherein following a single oral administration of the pharmaceutical dosage form, the pharm aceutical dosage form provides a maximum blood plasma concentration (C max ) of 19.851±5.8765 ng/mL of cyclobenzaprine HCl and an A UC 0-1 68 of 736.60±259.414 ng·hr/mL.

Id. at col. 10 ll. 23

– 45 (emphasis added)

. A fter Apotex filed an Abbreviated New Drug Applic ation seeking to produce and market a generic version of AMRIX ®

, 2 Aptalis sued Apotex for infringing claims 1, 2, and 5 of the ’199 patent, as well as claims 14, 16, and 17 of t he ’121 pate nt

. Apotex argue d that it does not infringe because its products contain a matrix

- style formulation.
The parties’ dispute centers on the construction of “an extended release coating comprising a water insoluble polymer membrane surrounding said core ,” which is found in every asserted claim. Before the district court issued its claim construction order , the parties stipulated to a construction for part of the disputed term. They agre ed that “ a water insoluble polymer membrane surrounding said core ” means “a water insoluble polymer covering that surrounds the active core.” J.A. 1619. The district court subsequently construed “extended release coating,” the remainder of the disputed c laim term, as “ [a] layer of any

2 The asserted patents are listed in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations for Aptalis’ AMRIX ® extended release pro duct.APTALIS PHARMATECH , INC

. v. APOTEX INC

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substance that is applied onto the surface of another, the purpose of which is to delay the release of a drug in order to maintain the drug at therapeutically effective conce ntrations over an extended period of time.” J.A. 23. Appl ying this claim construction, the district court found that Apotex’s ANDA product contain ed an extended release coating and infringe d the asserted claims of the ’199 and ’121 patents. Aptalis Pharmatech, Inc. v. Apotex Inc.

, 220 F. Supp. 3d 544, 550

– 55 (D. Del. 2016) (“ Dist

. Ct

. Op

. ”).
Apotex appealed the district court’s claim construction and its infringement finding. We have jurisdiction purs uant to 28 U.S.C. § 1295(a)(1)

. II. Claim construction seeks to ascribe the “ordinary and customary meaning” to claim terms as a person of ord inary skill in the art would have understood them at the time of invention. Phillips v. AWH Corp.

, 415 F.3d 1303, 1312

– 14 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc.

, 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

“ Where the district court ’ s claim construction relies only on intrinsic evidence, the construction is a legal determ ination reviewed de novo.” Ruckus Wireless, Inc. v. Inn ovative Wireless Sols., LLC , 824 F.3d 999, 1002 (Fed. Cir. 20 16) (citing Teva Pharm. USA, Inc. v. Sandoz, Inc.

, 135 S. Ct. 831, 841 (2015) )

. When construing claims, “there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specific ation. ” Comark Commc ’ ns, Inc. v. Harris Corp. , 156 F.3d 1182, 1186 (Fed. Cir. 1998). This case tiptoes that line. The specification does not provide a lexicographic defin ition of “coating,” and the prosecution history contains no clear and unmistakable disavowal of claim scope . Non etheless, Apotex contends that the intrinsic evidence would have taught an ordinarily skilled artisan at the time ofAPTALIS PHARMATECH , INC

. v. APOTEX INC

. 7

the invention that an “extended release coating” is limited to a continuous outer film, not simply “[a] layer of an y substance that is applied onto the surface of another.” For the reasons explained below, w e agree and adopt Apotex’s proposed construction of “extended release coating” as “a continuous outer film applied onto the surface of the active

- containing core to provide an exten ded release of the active core.” See Appellant s Br. 21. We begin, as we must, with the plain claim language. Phillips , 415 F.3d at 1312 (“[T]he claims are ‘of primary importance[] in the effort to ascertain precisely what it is that is patented.’” (quoting Merrill v. Yeomans , 94 U.S. 568, 570 (1876)). Here, t he claim language recites an

“ extended release coating comprising a water insoluble polymer membrane surrounding said [active

- containing]

core .” ’199 patent col. 10 ll. 28

– 29 (e mphases added). It is clear that the coating must surround the core . As the district court recognized, dictionaries define “surround” as “to enclose on all sides.” Dist. Ct. Op. , 220 F. Supp. 3d at 548 n.10. 3 A coating that surrounds the core or encloses it on all sides connotes a continuous coating , i.e., one that covers the entire surface of the core

. And, b ecause the extended release coating must surround the core, t he plain claim language suggests that the coating must be located outside of t he core. In other words, the water insoluble polymer membrane is an outer coating relative to the core

. Our construction reflects t hese limitations by requiring a “continuo u s outer film applied onto the su rface of the active

- containing core .”

3 The parties do not dispute that “surrounding,” as used in the ’199 patent, means “to enclose on all sides”; instead, they dispute whether “surround” means that the coating must be “continuous.” See Appellant s Br. 22; Appellee s Br. 39.APTALIS PHARMATECH , INC

. v. APOTEX INC

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The specification bolsters our conclusion that the e xtended release coating must be a continuous outer film

. See Phillips , 415 F.3d at 1315 (“[T] he specification ‘ is always highly relevant to the claim construction anal ysis. ’” (internal citation omitted))

. First, e very embodiment in the specification that discusses a coating describes a process in which the water insoluble polymer coating is external to the active

- containing core

. See, e.g.

, ’199 patent col. 4 ll. 15

– 17 (“ER Beads can be produced by applying a functional membrane comprising a water insoluble polymer alone or in combination with a water soluble polymer onto IR Beads .”); id. at col. 5 ll. 38

– 41 (“T he [active]

- containing particle may be coated with an extended release (ER) coating compri sing a water insol uble polymer or a combination of a water insoluble polymer and a water soluble polymer to provide ER beads.” ) ; id. at col. 4 ll. 33

– 36 (“ER beads include a core particle (IR (immediate release) bead) containing a skeletal muscle relaxant and an ER (extended release) coating comprising a water insoluble polymer surrounding the core.”); id. at col. 5 ll. 60

– 64 (describing process of “coating the IR bead with a plasticized water

- insoluble polymer alone such as ethylcellulose or in combination with a water soluble polymer such as hydroxypropylmethylcellulose to form an Extended Release (ER) bead”) ; id. at col. 7 ll. 32

– 35 (di sclosing the step of “coating the active drug particle with a solution or suspension of a water insoluble polymer or a mi xture of water soluble and water insoluble polymers to form an extended release coated drug particle (ER beads) ”)

. The same is true for Example 2 , which describe s spraying an extended release polymer membrane “onto the IR beads for a weight gain of approx imately 10%.” Id. at col. 8 ll. 39

– 43; see id. at col. 8 l. 62 – col. 9 l. 13 (di scussing Example 3’s application of extended release coating onto immediate release beads until a certain weight gain is reached)

.APTALIS PHARMATECH , INC

. v. APOTEX INC

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T hese disclosures would have taught a person of ord inary skill that the extended release coating is an outer coating of polymer relative to the active

- containing core

. 4 A nd the specification’s frequent references to applying the extended release coating “onto” the active

- containing core

compo rts with our understanding of the spatial orient ation required by the claims

. See, e.g.

, id. at col. 3 ll. 64

– 67, col. 4 ll. 15

– 17, col. 8 ll. 39

– 43, col. 8 ll. 62

– 66.
Second, t he specification demonstrates the inventors ’ ability to describe a non

- contin uous coating when they so desired. The specification’s background of the invention

4 The specification’ s disclosure of a n extended r elease matrix formulation does give us pause. S ee id. at col. 6 ll. 23

– 33 (describing an embodiment where the rate

controlling polymer is blended together with the active drug and compressed into beads, as opposed to spraying the rate controlling polymer onto a n active

- containing core). But while a construction that excludes a preferred embodiment “is rarely, if ever, correct,” Vitronics Corp.

, 90 F.3d at 1583, “[t]his does not mean . . . that each and every claim ought to be interpreted to cover each and every embodiment, ” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC , 815 F.3d 747, 755 (Fed. Cir. 2016). We note that the specification describes the steps in this embodiment as “blend [ ing ] ,” “granulat[ing],” “ext rud[i ng],” and “spheroniz[ing].” Id. at col. 6 ll. 26

– 30. The other embodiments and the claims, however, require

a “ coat ing ”; and , in any event, nothing in the specification forbids the application of an extended release coating onto this matrix embodiment. See Oral Arg. at 28:44

– 30: 29, http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20 17

- 1344.mp3

. Thus, this does not alter our conclusion that the specification, when read as a whole, would have taught an ordinarily skilled artisan that an “extended release coating” requires a continuous outer film.APTALIS PHARMATECH , INC

. v. APOTEX INC

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section referred to a prior art reference that disclosed the application of a water impermeable coating onto a core followed by the creation of apertures in the coating

. T he inventors of the asserted patents described the coating in this prior art reference as “ha[ving] apertures exposing between about 5

– 75% of the core surface.” Id. at col. 2 ll. 30

– 31. By contrast, the asserted claims require the coating to “surround[] said core. ” The inventors’ decision to claim a coating that surrounds the core instead of claiming a coating with a certain percentage of exposed core surface would have informed a person of ordinary skill in the art that the claims require a continuous

c oating

. T he prosecution history offers additional support for construing “extended release coating” to require a conti nuous outer film

. See Markman v. Westview Instruments, Inc. , 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“To construe claim language, the court should also consider the patent’s prosecution history, if it is in evidence.”). D uring prosecution of the ’199 patent

, the applicants submitted a d eclara tion f rom Dr. Jame s W. McGinity. The D eclaration summarizes Dr. McGinity’s interview with the e xaminer during the prosecution of a related patent application that shares the same specification as the asserted patents

. According to Dr. McGinity, the

process taught by the shared specification results in the form ation of a continuous film:

If the li quid medium used in the coating pr ocess contains the polymer suspended as an aqu eous dispersion, the polymer is initially deposited onto the core as discrete polymer spheres, which must then coalesce to form a continuous film

. In such cases, a plasticizer may be added to the li quid medium to facilitate the coalescence process. On the other hand, if the liquid medium contains the polymer dissolved as a solution in an organicAPTALIS PHARMATECH , INC

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solvent, a continuous film forms directly upon evaporation of the solvent

. J.A. 114 0– 41 , ¶ 9(c) (emphases added)

. A person of ord inary skill reading this Declaration would have underst ood that the extended release coatings of the invention were continuous films

. A nd an ordinarily skilled artisan would have understood the film to be an outer layer relative to the core because the coating is “deposited onto” the cores

. We are not persuaded by Aptalis’ arguments in defense of the district court’s contrary construction

. Aptalis first argues that the “applied onto the surface of the active

- containing core” and “outer” requirements would exclude preferred embodiments. In Example 2, for i nstance, a seal coat is applied on to the active

- containing core before the extended release coating

, and a n additio nal coating layer i s added after the extended release coa ting. See ’199 patent col. 8 ll. 23

– 46. Because there is a seal coat between the extended release coating and the active

- containing core

, Aptalis argues that the extended release coating was applied onto the seal coat, not “onto the surfac e of the active

- containing core.” Similarly, Aptalis interprets “outer” to mean “outermost” and points out that there is a coating layer applied onto the extended release coating in Example 2

. Neither argument is persuasive. The specification r efers to seal

- coated active

- containing cores as “core [s] ,” id. at col. 7 ll. 4– 14, so the presence of a seal coat does not mean that the extended release coating is no t applied “onto the surfac e of the active

- containing core. ” And although Aptalis is correct that there is no basis for requiring the extended release coating to be the “oute rmost” coating , our construction imposes no such requir ement. The extended release coating need only be an outer coating relative to the active

- containing core, which is consisten t with Example 2’s teachings

.APTALIS PHARMATECH , INC

. v. APOTEX INC

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Aptalis next asserts that the word “continuous” does not appear in the asserted patents and that a “contin uous” extended release coating would not be functional because the coating must be permeable to gastrointestinal fluids. Aptalis conflates continuity with permeability, as demonstrated by Dr. McGinity’s Declaration:
Extended release drug products may be made by coating water

- insoluble polymers (e.g., the w ater- insoluble polymers claimed by Applicants) o nto a core containi ng the active drug. In general, the applied polymer coatings do not dissolve when the drug product is ingested; instead, the coatings are semi

- permeable such that water can enter and exit the core , thereby releasing the dissolved drug at a controlled rate

. J.A. 1140, ¶ 9(a) (emphasis added)

. It follows that a continuous film covering the surface of the active

containing core would not defeat the extended release functionality because the polymer coatings described by the invention are semi

- permeable to water

. Finally, Aptalis contends that the prosecution history is irrelevant to the claim construction question here because there is no clear an d unmistakable disavowal of claim scope

. Our precedent does not support this propos ition. We have stated t hat “[a]ny explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to ‘capture the scope of the actual invention’ that is disclosed, described, and patented.” Fenne r Invs., Ltd. v. Cellco P’ ship , 778 F.3d 1320, 1323 (Fed. Cir. 2015) (quo ting Retractable Techs., Inc. v. Becton, Dickinson & Co.

, 653 F.3d 1296, 1305 (Fed. Cir. 2011)). Although t he prosecution history may lack the clarity imbued by the specification, it “ can often inform the meaning of the claim language by demonstrating how the inventor u nderstood the invention and whether the inventor limitedAPTALIS PHARMATECH , INC

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the invention in the course of prosecution, making the claim scope narrower than it would otherwise be .” Phi lli

ps , 415 F.3d at 1317. Accordingly, even in the absence of a clear and unmistakable disavowal, we conc lude that the prosecution history can be evaluated to determine how a person of ordinary skill would understand a given claim
term.

III.

We have considere d the parties’ remaining claim co nstruction arguments and find them unpersuasive. Because we conclude that the district court erred in construing the claims, we vacate and remand the district court’s infringement finding for further proceedings consistent with our claim construction.

VACATED AND REMANDED

C OSTS Costs to Appellant s.