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Human Use of Drug as Pain Killer Anticipates Claims for Animal Use of Same Drug as Diet Enhancer

August 09, 2001

Decision icon Decision

Last Month at the Federal Circuit - September 2001

Judges: Lourie (author), Michel, and Linn

In MSM Investments Co. v. Carolwood Corp., No. 00-1092 (Fed. Cir. Aug. 9, 2001), the Federal Circuit affirmed a SJ that the claims of U.S. Patent No. 5,071,878 (“the ‘878 patent”) are invalid under 35 U.S.C. § 102(b).

The ‘878 patent, owned by MSM Investments Company (“MSM Investments”), relates to a method of using methylsulfonylmethane (“MSM®”) to enhance the diet of an animal.

More than one year prior to the priority date of the ‘878 patent claims, September 14, 1982, Dr. Stanley Jacob publicly administered MSM® by oral ingestion to human patients at the Oregon Health Sciences University (“OHSU”) clinic to treat pain.

MSM Investments argued on appeal that the district court had erred in granting SJ of invalidity because the claims of the ‘878 patent are limited to the nutritional use of MSM®, whereas Dr. Jacob’s activities at the OHSU clinic were limited to pharmaceutical or pharmacological uses of MSM®. MSM Investments further contended that the district court had misconstrued claims 1 and 5 by concluding that they were not limited to nutritional uses of MSM®.

The Federal Circuit concluded that, contrary to the ordinary meaning of the word “feeding,” the teachings of the specification did not limit the claim to nutritional uses nor exclude pharmaceutical purposes. Indeed, the specification discloses that MSM® may be used as a food and as a normalizer of biological function. Moreover, the specification defines the word “food” as meaning a nutritive matepage rial taken into an organism for growth, work, protection, repair, restoration, and maintenance of vital processes.

The Court rejected MSM Investment’s argument that the examples of pharmaceutical uses in the specification were actually examples of different inventions claimed in different, but related, patents, given the generic use of the term “feeding.” Accordingly, the Court agreed that Dr. Jacob’s publicly administered MSM® as a pain reliever more than a year prior to the filing date of the ‘878 patent anticipated the claims.