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Details for Patent: 8,822,687

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Details for Patent: 8,822,687

Title:8a,14-dihydroxy-7,8-dihydrocodeinone
Abstract: 8.alpha.,14-Dihydroxy-7,8-dihydrocodeinone is described.
Inventor(s): Chapman; Robert (North Kingstown, RI), Rider; Lonn S. (Foster, RI), Hong; Qi (Sharon, MA), Kyle; Donald (Newtown, PA), Kupper; Robert (Coventry, RI)
Assignee: Purdue Pharma L.P. (Stamford, CT) The P.F. Laboratories, Inc. (Totowa, NJ) Purdue Pharmaceuticals L.P. (Wilson, NC) Rhodes Technologies (Coventry, RI)
Filing Date:Feb 24, 2010
Application Number:12/711,948
Claims:1. cited by applicant .
Opponent 1's Submission filed on Jul. 19, 2013, in corresponding European Patent No. 1 730 151. cited by applicant .
Opponent 2's Submission filed on Jul. 19, 2013, in corresponding European Patent No. 1 730 151. cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Amneal Pharmaceuticals, LLC., C.A. No. 11-cv-8153 (SDNY 2011). cited by applicant .
Teva Pharmaceuticals USA, Inc.'s First Amended Answer, Affirmative Defenses and Counterclaims to Complaint, Purdue Pharma L.P., et al. v. Teva Pharmaceuticals USA, Inc., C.A. No. 1: 11-cv-02037-UA (SDNY 2011). cited by applicant .
Decision revoking the European Patent issued in connection with European Application No. Application No. 05 730 345.5 on Nov. 8, 2013. cited by applicant .
Statement of Grounds & Particulars filed in connection with Australian Application No. 2009200335 on Jan. 25, 2012. cited by applicant .
Statutory Declaration by Christopher John Easton dated Mar. 7, 2014, filed in connection with Australian patent No. 2005230826. cited by applicant .
An English translation of Freund und Speyer, pp. 135-178 (1917). cited by applicant .
An English translation of Auterhoff, et al., pp. 420-428 (1994). cited by applicant .
Patent Examination Report No. 1, issued on Jan. 31, 2013, in connection with Australian Patent Application No. 2011213801. cited by applicant .
Office Action issued on Apr. 11, 2013, in connection with Vietnamese Patent Application No. 1-2011-01628. cited by applicant .
The Office Action issued on Apr. 17, 2013, in connection with Korean Patent Application No. 10-2013-7000989. cited by applicant .
The Office Action issued on Mar. 6, 2013, in connection with European Application No. 10 011 792.8. cited by applicant .
The Office Action issued on Mar. 6, 2013, in connection with European Application No. 10 011 791.0. cited by applicant .
Notice of Final Rejection issued on May 13, 2013, in connection with Korean Patent Application No. 10-2012-7006697. cited by applicant .
Translation of submission by Opponent 3 (Acino Pharma AG) dated Jun. 13, 2013, filed in connection with corresponding European Patent No. 1 730 151. cited by applicant .
English translation of Feldman et al., Obtaining of Dihydroxycodeinone Hydrochloride From Thebaine, Journal of Applied Chemistry, vol. XVIII, No. 11-12 (1945), including a copy of the article in Russian. cited by applicant .
2002 Label for Oxycontin.RTM., PDR, 56ed. (2002). cited by applicant .
Merck Index 13.sup.th edition, p. 7028 (2001). cited by applicant .
Barton, D.H.R., The conformation of the Steroid Nucleus, Experientia, vol. VI/8:316-320 (1950). cited by applicant .
Carey et al., Advanced Organic Chemistry, pp. 1022-105, 3rd ed. (1990). cited by applicant .
Grigor'eva, The Stereochemistry and Mechanism of Dehydration of Cyclohexane Derivatives, Russ. Chem. Rev., 31(1): 18-35 (1962). cited by applicant .
John McMurry, Organic Chemistry, pp. 249-252, 5.sup.th ed. (2002). cited by applicant .
Physicians Desk Reference, p. 2163, 51st ed. (1997). cited by applicant .
Ramanathan et al., Indian J Technol, pp. 350-351 (1964). cited by applicant .
Vogel's Textbook of Practical Organic Chemistry, pp. 89-90, and 133-153, 5th ed. (1989). cited by applicant .
Plattner and Furst, Helv. Chinn. Acta vol. 32, p. 275. (1949). cited by applicant .
Freund and Speyer, J. Prakt. Chem. 135-178 (1916). cited by applicant .
KW Bentley, The Chemistry of the Morphine Alkaloids, chapter XVII, pp. 243-250, Oxford at the Clarendon Press (1954). cited by applicant .
FDA Response issued on Nov. 21, 2011 to the Petition Submitted on Behalf of Lehigh Valley Technologies, Inc., and Glenmark Generics, Inc. dated May 31, 2011. cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Varam Inc., et al., C.A. No. 10-cv-04028-PBT (EDPA 2010). cited by applicant .
Varam, Inc.'s Answer, Separate Defenses and Counterclaims, Purdue Pharma L.P., et al. v. Varam Inc., et al., C.A. No. 10-cv-04028-PBT (EDPA 2010). cited by applicant .
Purdue's Answer to the Counterclaims of Defendant Varam, Inc., Purdue Pharma L.P., et. al. v. Varam Inc., et al., C.A. No. 10-cv-04028-PBT (EDPA 2010). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Varam, Inc., et al., C.A. No. 10 CIV 6038 (SDNY 2010). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Ranbaxy Inc., et al., C.A. No. 10-03734-SHS (SDNY 2010). cited by applicant .
Actavis Elizabeth LLC's Answer and Counterclaims, Purdue Pharma L.P. et al. v. Ranbaxy Inc., et al., C.A. No. 10-03734-SHS (SDNY 2010). cited by applicant .
Defendants Ranbaxy Inc.'s Answer and Counterclaims, Purdue Pharma L.P., et al. v. Ranbaxy Inc., et al., C.A. No. 10-03734-SHS (SDNY 2010). cited by applicant .
Plaintiffs' Answer to the Counterclaims of Defendants Ranbaxy Inc. et al., Purdue Pharma L.P. et al. V. Ranbaxy Inc. et al., C.A. No. 1-10-cv-03734-SHS (SDNY 2010). cited by applicant .
Mylan Pharmaceuticals Inc.'s and Mylan Inc.'s Answer and Counterclaims, Purdue Pharma L.P., et al. v. Ranbaxy Inc., et al., C.A. No. 10-03734-SHS (SDNY 2010). cited by applicant .
Plaintiffs' Answer to the Counterclaims of Defendant Actavis Elizabeth LLC, Purdue Pharma L.P., et al. v. Ranbaxy Inc., et al., C.A. No. 10-03734-SHS (SDNY 2010). cited by applicant .
Plaintiffs' Answer to the Counterclaims of Defendants Mylan Pharmaceuticals Inc. and Mylan inc., Purdue Pharma L.P., et al. v. Ranbaxy Inc., et al., C.A. No. 10-03734-SHS (SDNY 2010). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Ranbaxy Inc., et al., C.A No. 1:11-cv-2401-UA (SDNY 2011). cited by applicant .
Defendants Ranbaxy Inc.'s Answer and Counterclaims, Purdue Pharma L.P., et al. v. Ranbaxy Inc. et al., C.A. No. 1:11-cv-2401 (SDNY 2011). cited by applicant .
Plaintiffs' Answer to the Counterclaims of Defendants Ranbaxy Inc. et al., Purdue Pharma L.P., et al. v. Ranbaxy Inc. et al., C.A. No. 1:11-cv-02401 (SDNY 2011). cited by applicant .
Complaint, Purdue Pharma L.P., v. Ranbaxy Inc., et al., C.A. No. 11-cv-7104 (SDNY 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Watson Laboratories, Inc., et al., C.A No. 1:11-cv-02036-UA, (SDNY 2011). cited by applicant .
Answer, Purdue Pharma L.P., et al. v. Watson Laboratories, Inc., et al., C.A No. 1:11-cv-02036-UA (SDNY 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Andrx Labs, LLC, C.A. No. 11 CIV 00248 (DDDE 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Watson Laboratories, Inc., C.A. No. 0:11-cv-60643-xxxx (SDFL 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Actavis Elizabeth LLC, C.A. No. 1:11-cv-02038-UA (SDNY 2011). cited by applicant .
Answer of Plaintiffs Purdue and University of Texas System to the Counterclaims of Defendant Actavis Elizabeth LLC, Purdue Pharma L.P., et al. v. Actavis Elizabeth LLC, C.A. No. 1:11-cv-02038-UA (SDNY 2011). cited by applicant .
Plaintiff Purdue's Notice of Motion and Rule 12(b)(6) Motion to Dismiss Actavis's Third Counterclaim, Purdue Pharma L.P., et al. v. Actavis Elizabeth LLC, C.A. No. 1:11-cv-02038-UA (SDNY 2011). cited by applicant .
Memorandum of Law in Support of Plaintiffs' Rule 12(b)(6) Motion to Dismiss Actavis's Third Counterclaim, Purdue Pharma L.P., et al. v. Actavis Elizabeth LLC, C.A. No. 1:11-cv-02038-UA (SDNY 2011). cited by applicant .
Plaintiffs Reply in Support of Plaintiffs Rule 12(b)(6) Motion to Dismiss Actavis's Third Claim, Purdue Pharma L.P., et al v. Actavis Elizabeth LLC, C.A. No. 1:11-cv-02038-UA (SDNY 2011). cited by applicant .
Plaintiffs' Corrected Reply in Support of Plaintiffs Rule 12(b) (6) Motion to Dismiss Actavis's Third Counterclaim, Purdue Pharma L.P., et al. v. Actavis Elizabeth LLC, C.A. No. 1:11-cv-02038-UA (SDNY 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Impax Laboratories Inc, C.A. No. 1:11-cv-02400-UA (SDNY 2011). cited by applicant .
Answer, Affirmative Defenses, and Counterclaims of Defendant Impax Laboratories, Inc., Purdue Pharma L.P., et al. v. Impax Laboratories Inc, C.A. No. 1:11-cv-02400-UA (SDNY 2011). cited by applicant .
Answer of Plaintiffs Purdue and University of Texas System to the Counterclaims of Defendant Impax Laboratories, Inc., Purdue Pharma L.P., et al. v. Impax Laboratories Inc, C.A. No. 1:11-cv-02400-UA (SDNY 2011). cited by applicant .
Answer of Plaintiff/Counterclaim-Defendant Grunenthal Gmbh to the Counterclaims of Defendant Impax Laboratories, Inc., Purdue Pharma L.P., et al. v. Impax Laboratories Inc, C.A. No. 1:11-cv02400-UA (SDNY 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v. Sandoz Inc., C.A. No. 1:11-cv-04694-UA (SDNY 2011). cited by applicant .
Sandoz Inc.'s Answer, Affirmative Defenses and Counterclaims, Purdue Pharma L.P., et al. v. Sandoz Inc., C.A. No. 1:11-cv-04694-UA (SDNY 2011). cited by applicant .
Answer by Plaintiff/Counterclaim-Defendant Grunenthal Gmbh to the Counterclaims of Defendant Sandoz Inc. Purdue Pharma L.P., et al. v. Sandoz Inc., C.A. No. 1:11-cv-04694-UA (SDNY 2011). cited by applicant .
Answer of Plaintiffs Purdue and University of Texas System to the Counterclaims of Defendant Sandoz Inc., Purdue Pharma L.P., et al. v. Sandoz Inc., C.A. No. 1:11-cv-04694-UA (SDNY 2011). cited by applicant .
Complaint, Purdue Pharma L.P., et al. v Teva Pharmaceuticals USA, Inc., C.A. No. 1:11-cv-02037-UA (SDNY 2011). cited by applicant .
Teva Pharmaceuticals USA, Inc.'s Answer, Affirmative Defenses and Counterclaims to Complaint, Purdue Pharma L.P., et al. v Teva Pharmaceuticals USA, Inc., C.A. No. 1:11-cv-02037-UA (SDNY 2011). cited by applicant .
Answer by Plaintiff/Counterclaim-Defendant Grunenthal GmbH to the Counterclaims of Defendant Teva Pharmaceuticals, Inc., Purdue Pharma L.P., et al. v Teva Pharmaceuticals USA, Inc., C.A. No. 1:11-cv-02037-UA (SDNY 2011). cited by applicant .
Answer of Plaintiff Purdue to the Counterclaims of Defendant Teva Pharmaceuticals USA, Inc., Purdue Pharma L.P., et al. v Teva Pharmaceuticals USA, Inc., C.A. No. 1:11-cv-02037-UA (SDNY 2011). cited by applicant .
Answer of Plaintiff Purdue to the First Amended Counterclaims of Defendant Teva Pharmaceuticals USA, Inc., C.A. No. 1:11-cv-2037-SHS (SDNY 2011). cited by applicant .
Plaintiffs Answer to the Counterclaims of Defendants Ranbaxy Inc., Ranbaxy Pharmaceuticals, Inc. And Ranbaxy Laboratories Ltd., C.A. No. 1:11-cv-7104-SHS (SDNY 2011). cited by applicant .
Answer by Plaintiff/Counterclaim Defendant Grunenthal GmbH to the First Amended Counterclaims of Defendant Teva Pharmaceuticals, Inc., C.A. No. 1:11-cv-2037-SHS (SDNY 2011). cited by applicant .
Summons to attend oral proceedings issued in connection with corresponding European Application No. 05 730 348.5 on Nov. 5, 2012. cited by applicant .
Third Party Observations filed in connection with corresponding European Application No. 10011791.0-2117/2311839 on Nov. 30, 2012. cited by applicant .
Third Party Observations filed in connection with corresponding European Application No. 10011787.8-2117/2319846 on Nov. 30, 2012. cited by applicant .
Third Party Observations filed in connection with corresponding European Application No. 10011788.6-2117-2316837 on Nov. 30, 2012. cited by applicant .
Third Party Observations filed in connection with corresponding European Application No. 11186168.8-2117/2426132 on Nov. 30, 2012. cited by applicant .
A. Kleemann et al., "Pharmaceutical Substances: Syntheses, Patents, Applications", vol. 2: N-Z, 4.sup.th edition 2001, publisher Thieme, Stuttgart, p. 1530. cited by applicant .
The Japanese Pharmacopoeia, 16.sup.th edition, pp. 1196-1199 (2011). cited by applicant .
Patentee's response to (i) the opposition brief filed on behalf of Actavis Group against European Patent No. 1 730 151 on Dec. 9, 2011, (ii) the opposition brief filed on behalf of Acino Pharma AG against European Patent No. 1 730 151 on Dec. 8, 2011, and (iii) the opposition brief filed on behalf of Almut Susanne Elend against European Patent No. 1 730 151 on Dec. 5, 2011, the response dated Jul. 27, 2012. cited by applicant .
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English translation of the Office Action Issued by the Japanese Patent Office in connection with corresponding Japanese Patent Application No. 2011-251260 on Jun. 12, 2012. cited by applicant .
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English translation of the Office Action Issued by the Korean Patent Office in connection with corresponding Korean Patent Application No. 10-2012-7006697 on Jul. 5, 2012. cited by applicant .
Ulrich Weiss, "Derivatives of Morphine," J. Am. Chem. Soc. 1955, v. 77, pp. 5891-5892, Nov. 20, 1955. cited by applicant .
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Office Action issued on Oct. 23, 2012, in connection with Japanese Patent Application No. 2011-251260. cited by applicant .
Citizen Petition on behalf of Endo Pharmaceuticals dated May 13, 2010. cited by applicant .
FDA response to Citizen Petition on behalf of Endo Pharmaceuticals dated May 13, 2010, the response dated Nov. 8, 2010. cited by applicant .
Krassnig et al., Arch. Pharm. Pharm. Med. Chem. (1996), pp; 325-326. cited by applicant .
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Exhibit 1027 From US patent Interference 105,553: transcript of the Videotaped Deposition of Steven W. Baldwin, Ph.D., taken on Sep. 21, 2007. cited by applicant .
Exhibit 1024 from US patent interference 105,553: Citizen Petition Filed on Oct. 10, 2007. cited by applicant .
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Exhibit E1 from the Opposition filed by Actavis Group on Dec. 9, 2011, against European patent 1 730 151. cited by applicant .
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Opposition brief filed on behalf of Actavis Group against European Patent No. 1 730 151 on Dec. 9, 2011. cited by applicant .
English translation of the opposition brief filed on behalf of Acino Pharma AG against European Patent No. 1 730 151 on Dec. 8, 2011. cited by applicant .
Opposition brief filed on behalf of Almut Susanne Elend against European Patent No. 1 730 151 on Dec. 5, 2011. cited by applicant .
English translation of notice of opposition filed against Costa Rican Divisional Application No. 2011-0376 on Jan. 13, 2012. cited by applicant .
English translation of the opposition brief filed on behalf of Asociacion de la Industria Farmaceuitca Nacional (ASIFAN) against Costa Rican Divisional Application No. 2011-0376 on Jan. 25, 2012. cited by applicant .
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The Office Action issued on Dec. 21, 2012 by the European Patent Office, in connection with European Application No. 10 011 788.6. cited by applicant .
The Office Action issued on Dec. 21, 2012 by the European Patent Office, in connection with European Application No. 11 186 168.8. cited by applicant .
The Notice of Reasons for Rejection issued on Feb. 19, 2013 by the Japanese Patent Office, in connection with Japanese Application No. 2011-251260. cited by applicant .
The Notice of Final Rejection issued on Feb. 28, 2013 by the Korean Patent Office, in connection with Korean Application No. 10-2012-7017379. cited by applicant .
Statutory Declaration by Philip Andrew Marshall dated Oct. 8, 2013, including Exhibits PAM-29 to PAM-38, which was filed in connection with Australian patent No. 2005230826 on Oct. 8, 2013. cited by applicant .
Statutory Declaration by Philip Andrew Marshall dated Jul. 30, 2013, including Exhibits PAMD-1 to PAMD-15, which was filed in connection with Australian divisional patent No. 2009200335 on Aug. 6, 2013. cited by applicant .
Statutory Declaration No. 1 by Carol Margaret Burton dated 31 Jul. 2013, including Exhibits CMB-1 to CMB-10, which was filed in connection with Australian divisional patent No. 2009200335 on Aug. 6, 2013. cited by applicant .
Statutory Declaration No. 2 by Carol Margaret Burton dated Jul. 31, 2013, including Exhibits CMB-11 to CMB-18, which was filed in connection with Australian divisional patent No. 2009200335 on Aug. 6, 2013. cited by applicant .
Freund und Speyer, pp. 135-178 (1917). cited by applicant .
Auterhoff, et al., pp. 420-428 (1994). cited by applicant .
Day 1 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 16, 2012. cited by applicant .
Day 2 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 19, 2012. cited by applicant .
Day 3 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 20, 2012. cited by applicant .
Day 4 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 21, 2012. cited by applicant .
Day 5 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 26, 2012. cited by applicant .
Day 6 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 27, 2012. cited by applicant .
Day 7 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Nov. 28, 2012. cited by applicant .
Day 8 Trial Transcript--Purdue Pharma LP, et al., v Actavis Elizabeth LLC, et al., Dec. 12, 2012. cited by applicant .
Purdue v. Teva, Trial Decision (Case 04-MD-01603-SHS 568) (# 149 Jan. 14, 2014). cited by applicant.

Primary Examiner: Aulakh; Charanjit
Attorney, Agent or Firm: Davidson, Davidson & Kappel, LLC.
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