Disclosure of Parent Genus Does Not Invalidate Species Claims

In UCB Inc., v. Accord Healthcare Inc., the Federal Circuit affirmed the district court’s holding that UCB’s patent on the anti-epileptic drug lacosamide was not rendered obvious by prior art.

The Federal Circuit affirmed the district court’s conclusion that that the patent was distinct from the prior art. The prior art analysis revealed no teachings that render the particular species of combinations claimed obvious, even when the prior art disclosed a broad genus covering the claimed compound generally. The Federal Circuit rejected Appellants’ argument that the presumption of an enabled genus of compounds precludes the finding that there was no reasonable expectation of success of creating a species falling within that genus, stating that such preclusion would create a chilling effect in the chemical arts that would invalidate a compound based on broad genus claims.

The Federal Circuit additionally rejected that the enantiomer lacosamide’s structure had necessarily been revealed by a prior art source that disclosed the chemical structure of the corresponding racemate. Although prior art disclosed the chemical structure of the racemate, it did not disclose its separation into individual enantiomers or data on the separate enantiomers themselves, which the Court found to be patentably distinct.