December 2011

Looking Ahead

On December 1, 2011, in Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP, No. 11-1091 (Fed. Cir. Dec. 1, 2011), the Federal Circuit affirmed the district court’s SJ in favor of AstraZeneca Pharmaceuticals LP (“AstraZeneca”) invalidating several of Teva Pharmaceutical Industries Ltd.’s (“Teva”) patent claims based on AstraZeneca’s prior invention under 35 U.S.C. § 102(g)(2).  The Court determined that for prior invention of a claim to a pharmaceutical composition comprising a stabilizing effective amount of a particular compound, AstraZeneca “had to appreciate that the compound it asserted as its invention was stable and what the components of [the] formulation were. . . . However, AstraZeneca did not need to appreciate which component was responsible for the stabilization.”  Slip op. at 12.  The Court rejected Teva’s argument to the contrary because such result would effectively require a prior inventor to “conceiv[e] of its drug in the same words in which Teva later chose to claim it.”  Id. Thus, because the invention is the subject matter defined by the claims and not the language of the claims themselves, the Federal Circuit affirmed the district court’s finding of invalidity.  Read the full summary in next month’s edition of Last Month at the Federal Circuit.