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Inventor’s Discovery of Scientific Principles Does Not Entitle Him to Remove Prior Art from Public Domain

June 17, 2005

Decision icon Decision

Last Month at the Federal Circuit - July 2005

Judges: Rader (author), Michel, and Schall

In Upsher-Smith Laboratories, Inc. v. Pamlab, L.L.C., No. 04-1405 (Fed. Cir. June 17, 2005), the Federal Circuit affirmed the district court’s SJ of invalidity for claims directed to the composition of a vitamin supplement. The claims, which stated that the composition be “essentially free of antioxidants,” were anticipated and obvious in light of an earlier European patent application that “optionally includes” antioxidants.

Upsher-Smith Laboratories, Inc. (“Upsher-Smith”) filed an infringement suit against Pamlab, L.L.C. and others (collectively “Pamlab”) in response to Pamlab’s manufacture of vitamin compositions excluding antioxidants, as claimed in Upsher-Smith’s patents-insuit. Pamlab countered that Upsher-Smith’s patents were invalid based on a European patent application.

The prior art European patent application disclosed several vitamin supplements. However, it also taught that the addition of other antioxidants in combination with these vitamin supplements provided synergistic health benefits. Thus, it disclosed the optional supplementation of its vitamins with these antioxidants. Dr. Herbert, the named inventor of the patentsin- suit, discovered that these supplemental antioxidants were actually detrimental to the functioning of the vitamins, and that no synergy existed. Based on this finding, Dr. Herbert distinguished the prior art in order to secure a patent by expressly excluding the supplemental antioxidants. Upsher-Smith admitted that the only difference between the asserted claims and the prior art was the negative limitation expressly excluding the antioxidants.

The Federal Circuit reiterated the well-settled patent principle that a product that would literally infringe if later in time, anticipates if earlier. Thus, the Federal Circuit found the European patent application anticipated the claims of the patents-in-suit because compositions according to the European application made without antioxidants would infringe those claims of the patents-in-suit that expressly excluded antioxidants. The Federal Circuit rejected Upsher-Smith’s assertion that the European patent application taught away from expressly excluding antioxidants because of their optional inclusion. The Federal Circuit stated that “a reference is no less anticipatory if, after disclosing the invention, the reference then disparages it.” Thus, the Court concluded, the question whether a reference teaches away from the invention is inapplicable to an anticipation analysis.

The Federal Circuit concluded that it was improper to allow the withdrawal of some vitamin compositions from the public domain simply because the inventor had subsequently figured out the scientific underpinnings of their operation.