Parkinson’s Patent Invalid Based on Obviousness of Overlapping Ranges

In UCB, Inc. v. Actavis Laboratories UT, Inc., No. 2021-1924 (Fed. Cir. Apr. 12, 2023), the Federal Circuit affirmed a District of Delaware decision of invalidity based on obviousness.

The patent-in-suit, U.S. Patent No. 10,130,589 (“the ’589 patent”), is directed to transdermal patches, for treating Parkinson’s disease, containing rotigotine and a polyvinylpyrrolidone (PVP) stabilizer in a weight ratio ranging from “about 9:4 to 9:6.” The district court found that other UCB patents (“the Muller patents”) that are prior art to the ’589 patent disclosed rotigotine:PVP ratios ranging from 9:1.5 to 9:5, which overlap with the claimed range. As a result, the district court found that the asserted claims were anticipated and rendered obvious by the Muller patents.

On appeal, the Federal Circuit found that the district court erred in its anticipation analysis. Specifically, the district court erred in applying “point-within-a-range” cases when it was undisputed that the Muller patents disclosed a range of rotigotine:PVP ratios. However, the Federal Circuit affirmed the district court’s obviousness determination. The Federal Circuit determined that UCB “failed to rebut this prima facie case of obviousness” arising from the overlap in the claimed range and the range disclosed in the Muller patents. In doing so, the Court held that the district court did not err in its analysis of the closest prior art or its finding that the prior art did not teach away from the claimed range.