Academic journal article Santa Clara High Technology Law Journal

Schering Corp. V. Geneva Pharmaceuticals, Inc.: Just How Far Can Inherent Anticipation Extend?

Academic journal article Santa Clara High Technology Law Journal

Schering Corp. V. Geneva Pharmaceuticals, Inc.: Just How Far Can Inherent Anticipation Extend?

Article excerpt

I. INTRODUCTION

United States patent law precludes obtaining or enforcing patents covering an invention previously in use or described in a printed publication. (1) Where a printed prior-art reference discloses within its four corners all aspects of a subsequently claimed invention, the reference "anticipates" the claimed invention. (2) References that anticipate a claimed invention show that the invention lacks novelty and renders invalid any claim to that described invention.

In a typical anticipation analysis, the challenger (an accused infringer, if in litigation, or the Examiner, if in prosecution) usually tries to show that a single prior-art reference expressly discloses each and every limitation of the asserted claim. (3) Generally, if the prior-art reference does not disclose each and every claim limitation, the reference does not anticipate the claim. Sometimes the reference if combined with another prior-art reference may show each claim limitation in a way that renders the claimed invention obvious, and thereby invalid under 35 U.S.C. [section] 103(a), but the reference by itself still does not anticipate. (4)

Quite often it is easier to prove that a prior-art reference anticipates a claimed invention than to prove that it renders the claimed invention obvious. Obviousness based on a modification of single prior-art reference or a combination of references requires proving, inter alia, that a person of ordinary skill in the art would have the motivation to make the modification or combination. (5) Patentees may also try to rebut a prima facie case of obviousness by presenting evidence of secondary considerations, such as commercial success, teaching away, unexpected results, or long-felt need, etc. (6) Anticipation, on the other hand, requires only showing that each limitation of the claimed invention is found within the four corners of a prior-art reference. Issues of motivation, commercial success, teaching away, or unexpected results have no relevance in rebutting an assertion of anticipation. (7)

Challengers seeking to invalidate a patent claim for anticipation often find that a prior-art reference, which looks promising at first, falls short of explicitly describing all of the limitations of the claimed invention. Despite the lack of an express disclosure, if the challenger can show that the missing aspect necessarily results from practicing the subject matter explicitly disclosed in the reference, the law will consider the missing aspect inherently present. Thus, the doctrine of inherency allows a de facto implicit disclosure to provide missing express disclosure when considering anticipation. Where the combination of the expressly disclosed subject matter and the inherently disclosed subject matter meets each claim limitation of a later-claimed invention, the reference inherently anticipates the later-claimed invention.

Until recently, no reported Federal Circuit case had considered invalidating a patent claim on the basis that the entire anticipatory disclosure was inherently disclosed in a prior-art reference. That changed with the Federal Circuit's recent decision in Schering Corp. v. Geneva Pharmaceuticals, Inc. (8)

In Schering, the Federal Circuit held that a prior-art reference, allegedly silent on a later-claimed compound, can nevertheless inherently anticipate claims to that compound if the production of the compound necessarily follows from practicing a process described in the reference. Further, the Federal Circuit held that it does not matter that one of skill in the art may not have recognized that the prior-art process inherently produces the later-claimed compound.

This article reviews the law on the doctrine of inherent anticipation. It further examines the panel's decision in Schering and the Federal Circuit's later denial of the patentee's petition for an en banc hearing. Finally, the article provides some suggestions for drafting claims in view of the decision. …

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