Oh my...
Lilly's Tadalafil Particle Size Patent - IPR Granted
Lilly's tadalafil '975 particle size patent is now in a full IPR. The PTAB granted the IPR petition on the grounds that it was probably obvious to reduce particle size for poorly soluble drugs.
The petitioner was Actelion.
For those that are litigating particle size patents, the Institution decision has the rationales for reducing particle size. An argument raised was that the rationale was a poorer choice (i.e., a worse alternative). The PTAB said this, which I thought was interesting (the quote from In Re Mouttet):
Moreover, even if co-precipitation methods like that of Butler
“represent[] the ultimate in size reduction,” it does not compel us to ignore
evidence of record (Ex. 1011, 3:6467) indicating that micronization of drug
substances for the purposes of improving dissolution rate was a conventional
method known in the art. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012)(“[J]ust because better alternatives exist in the prior art does not mean
that an inferior combination is inapt for obviousness purposes.”).
Furthermore, we note that there is no evidence on the current record to show
that providing tadalafil in free drug particulate form was uniquely
challenging or difficult for one of ordinary skill in the art.