Effectiveness Not Required For Anticipation When Prior Art Disclosed Treatment By The Patented Compound

Case: Impax Labs., Inc. v. Aventis Pharm. Inc., No. 05-1313 (Fed. Cir. 11/20/06)

The One Sentence Summary: Anticipation by prior art can occur if the invention is enabled even though the prior art does not disclose the effectiveness of the invention and in fact teaches away from the invention.


What They Were Fighting About: Patentee claimed that the accused infringer infringed a patent for the use of riluzole for treating Lou Gehrig's disease (ALS). After a bench trial the court rejected defenses of inequitable conduct and anticipation.

Federal Circuit Holdings:

• The panel affirmed the district court's holding that there was no inequitable conduct. By presenting evidence that the patented compound was more effective than two other compounds, the applicant did not need to present evidence as to other compounds not discussed. Moreover, as to these other compounds, the district court correctly found that they were not material because even though some of these compounds exhibited one of the two improvements claimed for the patented compound, neither exhibited improvement in all of the areas claimed for the patented compound.
• There was no error by the district court in finding no intent to deceive in its inequitable conduct analysis.
• The district court erred in finding that a prior art patent did not anticipate because the earlier patent had not claimed that the patented compound riluzole was effective in treating ALS. The panel noted that anticipation under 35 U.S.C. § 102(b) requires only that the prior art enable a person of ordinary skill in the art to carry out the invention. There is no requirement that the prior art show the usefulness or effectiveness of the invention. The court remanded for determination as to whether the prior art enabled the invention.
• The panel affirmed the district court in a finding that an earlier application that disclosed hundreds of compounds did not anticipate because it did not allow one of skill in the art to envision all of the members of the class of compounds.
• Prior art can anticipate even if it teaches away from the invention.