Tuesday, May 08, 2012

CAFC split on inherency in In re Montgomery


 We thus affirm the rejection of claims 42, 43, and 45 of the ’824 application as anticipated by HOPE. Because we affirm the Board’s decision on this ground, we need not reach the issue of whether the claims are anticipated by the other prior art considered by the Board. 

Of inherency:

The Board rejected Montgomery’s argument that none of the references demonstrated that ramipril actually treats or prevents stroke, noting that ramipril inherently treats or prevents stroke, and “[i]t matters not that those of ordinary skill heretofore may not have recognized these inherent characteristics.” Id. at *4 (quoting In re Cruci- ferous Sprout Litig., 301 F.3d 1343, 1350 (Fed. Cir. 2002)) (internal quotation marks omitted).  


We have repeatedly held that “[n]ewly discovered re- sults of known processes directed to the same purpose are not patentable because such results are inherent.” Bristol-Myers Squibb, 246 F.3d at 1376. As we stated in Cruciferous Sprout, 301 F.3d at 1350, “[i]t matters not that those of ordinary skill heretofore may not have recognized the[] inherent characteristics of the [prior art].”  

Of broadest reasonable interpretation/anticipation:

 “During examination, ‘claims ... are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (alteration in original) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). The broadest reasonable interpretation, like claim construction in the infringement context, is a question of law that we review de novo. In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011). “The second step [of an anticipation analysis] involves comparing the claims to the prior art. Anticipa- tion is a question of fact reviewed for substantial evi- dence.” In re Aoyama, 656 F.3d at 1296. A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010). A reference may anticipate inherently if a claim limitation that is not expressly disclosed “is necessarily present, or inherent, in the single anticipating reference.” Id. at 1337 (quoting Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)) (internal quotation mark omitted). The inher- ent result must inevitably result from the disclosed steps; “[i]nherency . . . may not be established by probabilities or possibilities.” Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). 


 see also SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44 (Fed. Cir. 2005) (holding a chemical patent inherently anticipated and stating that it was irrelevant whether the inherently disclosed chemical was ever actually produced). 

Judge Lourie, in dissent

 Inherency is a very tricky concept in patent law. Its salutary goal is to prevent subject matter that is effec- tively in the public’s possession from being retrieved by a patent and withdrawn from the public domain. On the other hand, its downside is withholding patent protection from that which the public knew nothing about until a later inventor found it. A case cited by the majority, Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373 (Fed. Cir. 2003), illustrates the problem. A claimed compound not known to the art was held to be anticipated by inherency when it was found to be a metabolite of a prior art compound. Of course, many compounds admin- istered to humans and animals do metabolize in some manner rather than being fully excreted as such. In Schering, however, the prior art (1) did not disclose the later-claimed metabolite; (2) did not disclose any of the prior art compound’s metabolites; and (3) did not even disclose that the prior art compound could metabolize upon administration. Id. at 1376. On those facts, the court nonetheless concluded that the later-claimed com- pound was necessarily “in the public’s possession,” and thus was anticipated by inherency. Id. at 1380 (internal quotation marks omitted); see also Schering Corp. v. Geneva Pharm., Inc., 348 F.3d 992, 995–96 (Fed. Cir. 2003) (Lourie, J., dissenting from denial of petition for rehearing en banc).

An unbounded concept of inherency, as Schering illus- trates, threatens to stymie innovation by withdrawing from the realm of patentability that which has not before been known, used, or benefited from. Properly under- stood, anticipation by inherency is far more limited. See Tilghman v. Proctor, 102 U.S. 707, 711 (1880) (declining to find anticipation by inherency where a skilled artisan “certainly never derived the least hint” of the claimed process from the prior art). 


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