PAR wins appeal in “megestrol” case; D. Maryland decision vacated
As to obviousness,
We first must determine whether TWi carried its
burden to prove that all claimed limitations are disclosed
in the prior art. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1164 (Fed. Cir. 2006) (stating that we consider
motivation to combine and reasonable expectation of
success only “if all the elements of an invention are found
in a combination of prior art references”).
Because the prior art failed to disclose a known food
effect in megestrol, both TWi and the district court rely on
the doctrine of inherency to disclose the food effect limitation.
Id. at *13 (“The claimed pharmacokinetic properties
with respect to a food effect, however, are inherent prop-
erties of the obvious nanoparticulate formulation claimed
by the ’576 patent . . . .”). We conclude that the district
court erred in its inherency analysis under our precedent
Application of Shetty, 566 F.2d 81, 86 (C.C.P.A. 1977)
(“‘[T]he inherency of an advantage and its obviousness are entirely different
questions . . . . Obviousness cannot be predicated on what
is unknown.’” (quoting In re Spormann
, 363 F.2d 444, 448
The blog PatentlyO considered this an endorsement of functional claiming:
The case is interesting because it further solidifies the appellate court’s stance that functional claim limitations should be given their full weight and merit even when serving as the point-of-novelty of the invention.
IPBiz views the case more a cautionary flag from the CAFC about the use of inherency arguments in
cases involving obviousness rejections. For something to be obvious, it must be known.
Anticipation does not require knowledge but obviousness does. Anticipation is NOT the epitome of obviousness.
PatentlyO link: http://patentlyo.com/patent/2014/12/continues-pharmaceutical-function.html