Newly Discovered Property of Prior Art Drug Mixture Was Anticipated and Unpatentable

Case: Abbot Laboratories v. Baxter Pharm. Prods., Inc., No. 06-1021, 06-1022, 06-1034 (Fed. Cir. 11/9/06)

The One Sentence Summary: Patent for a drug that was mixed with water to prevent degradation was anticipated and invalid due to an earlier patent disclosing the water-saturated drug even though the benefits of preventing degradation were not understood in the prior art.

Federal Circuit Holdings:

• An inherent but newly-discovered property of the prior art cannot be claimed in a new patent.
• The exception that new uses of known processes may be patentable did not apply to the composition claims. As to the process claims, there was no new purpose distinguishing the prior art. Both the prior art and the patent at issue were directed to delivering the drug safely.