June 11, 2018
Authored and Edited by Y. Leon Lin; M. Andrew Holtman, Ph.D.
In UCB, Inc. v. Accord Healthcare, Inc., Nos. 16-2610, 16-2683, 16-2685, 16-2698, 16-2710, 17-1001 (Fed. Cir. May 23, 2018), the CAFC affirmed the district court’s holding that the asserted claims were not invalid for obviousness or anticipation. The majority agreed that the asserted claims were patentably distinct from an earlier patent by the same inventor because there would have been no reasonable expectation of success of modifying the earlier compound with the particular substituents, and the disclosure of the genus in the earlier patent was not an enabling disclosure of the species. The court also held that a claim to the R-enantiomer was neither anticipated nor made obvious by the disclosure of the chemical structure of the corresponding racemate in the prior art. This appeal arose from ANDA litigation challenging the patent covering Vimpat® (lacosamide), an anti-epileptic medication. Further discussion of the decision can be found on Finnegan’s Federal Circuit IP Blog.
drugs, Food and Drug Administration (FDA), United States Court of Appeals for the Federal Circuit (CAFC), anticipation, Obviousness (35 USC § 103), Obviousness-type Double Patenting (OTDP)
*Leon Lin is a Law Clerk at Finnegan
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