Inherency Remains High Bar to Meet

Inherent anticipation arises when the prior art discloses a property that is “necessarily present.” Arbutus Biopharma Corp. v. Modernatx, Inc., 65 F.4th 656, 662 (Fed. Cir. 2023); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002). The Federal Circuit has a long-established standard for determining inherency:

Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.

Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1267-69 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).

The Federal Circuit applied that standard in Arbutus v. Modernatx to find inherent anticipation, affirming a holding of unpatentability by the Patent Trial and Appeal Board (“the PTAB”). Making the formulations according to the prior art “would naturally result in a composition having the claimed . . . property.” Arbutus Biopharma Corp. v. Modernatx, Inc., 65 F.4th 656, 664 (Fed. Cir. 2023). This was not “a case where there is only a probability that the Morphology Limitation would result from controlling several variations of formulations and processes.” Id. at 664-665.

In SNF S.A. v. Chevron U.S.A., Inc., IPR2022-01534, Paper 46 (P.T.A.B. Apr. 18, 2024), the PTAB found that the high standard to show inherent anticipation was not met. The challenged independent claim recited a method for preparing an inverted polymer solution, and the limitation at issue was “wherein the inverted polymer solution has a filter ratio of 1.5 or less at 15 psi using a 1.2 μm filter.” According to Petitioner, this feature is an inherent physical property. Id. at *10. To prove it, Petitioner’s experts conducted tests based on the prior art disclosure. Id. at *22. However, as Patent Owner explained, Petitioner’s expert modified the procedure. Id. at *23. When analyzed without the modification, the process did not meet the specific filter ratio. Id. at *27. The PTAB concluded that Petitioner failed to prove inherent anticipation by a preponderance of the evidence. Id. An appeal to the Federal Circuit was filed June 5, 2024.

Take Aways

Inherent anticipation is a high bar. Patent Owners can overcome inherent anticipation arguments by showing that practicing the prior art does not “necessarily and inevitably” result in the claimed invention.