Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-00940-JJF Document 107 Filed 07/06/2007 Page 1 of 2
RICHARDS, LAYTON Sr FINGER
A PROFESSIONAL ASSOCIATION
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July 6, 2007
BY ELECTRONIC FILING
The Honorable Joseph J, Farnan, Jr.
United States District Court for
the District of Delaware
Federal Building
844 King Street
Wilmington, Delaware 19801
RE: The Procter & Gamble Company v. Teva Pharmaceuticals USA, Inc.,
C.A. No.: 04-940-JJF
Dear Judge Farnan:
We represent The Procter & Gamble Company (“P&G”) in the above—captioned case,
which was tried before the Court in November 2006, We write to bring to the Court’s attention
the Federal Circuit’s recent decision in Takeda Chemical Industries, Ltd. v. Alp/zap/rarm Pty.,
Ltah, No. 06—l329 (June 28, 2007). The Takeda decision represents the Federal Circuit’s first
application of the Supreme Court’s recent KSR Int'! Co. v., Telejlex, Inc. , l27 S,Ct. 1727 (2007)
decision to a case involving a new pharmaceutical compound. In particular, in Takeda, the
Federal Circuit rejected an argument identical to that asserted by defendant Teva
Pharmaceuticals here, namely that the structural similarity of claimed and prior art compounds
with substituted pyridyl rings is sufficient to establish prima facie obviousness. A copy of the
opinion is attached.
in Takeda, the Federal Circuit, among other things:
· affirmed the district court’s conclusion that the defendant had "fai1ed to
prove by clear and convincing evidence" that the asserted claims of Tal 4,687,777 was invalid as obvious (id- at 1, 5);
· rejected the defendanlfs argument that 'l`akeda’s patent, which claims a
pharmaceutical compound with an ethyl group attached at the 5—position on the pyridyl ring, was
prima facie obvious over the closest prior art compound, which included a methyl group attached
at the 6-position on the pyridyl ring (ia'. at 20-21);
· concluded that the Federal Circuit’s test for "prima facie obviousness for
chemical compounds is consistent with the legal principles enunciated in KSR" and that "in cases
involving new chemical compounds, it remains necessary to identify some reason that would
RI.Fl—3l74977~I

Case 1 :04-cv-00940-JJF Document 107 Filed 07/06/2007 Page 2 of 2
The Honorable Joseph I. Farnan
July 6, 2907
Page 2
have led a chemist to modify a known compound in a particular manner to establish prima facie
obviousness of a new claimed compound” (id. at IO); and
· rejected the defendant’s contention that the prior art "fell within the
objective reach of the claim" and that, as a result, KSR mandated reversal. The Takeda court
rejected this contention because it concluded that (a) “the prior art disclosed a broad selection of
compounds any one of which could have been selected as a lead compound for further
investigation," and (b) the closest prior art compound "exhibited negative properties that would
have directed one of ordinary skill away from that compound? (Id. at 15),
If Your Honor should have any questions or concerns, undersigned counsel
remains avaiiable at the Court’s convenience.
Respectfully,
Steven J. Fineman (#4025)
SJF/lll
Enclosure
cc: Clerk ofthe Court (w/e) (By Electronic Filing)
Josy W. Ingersoll, Esquire (w/e) (By Electronic Filing)
Vinita Ferrera, Esquire
Frederick L. Cottrell, III, Esquire
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