New Appreciation of Composition’s Properties are Not Patentable

SevofluraneAbbott Labs. v. Baxter Pharm. (Fed. Cir. 2006).

Way-back-when, Abbott went through a recall of its inhalation anesthetic sevoflurane because of excess Lewis acid buildup.  Abbott’s scientists figured-out that mixing water in the solution would bind an deactivate Lewis acids, and stabilize the product. Abbott changed its product and also obtained patent protection.

When Baxter filed its Abbreviated New Drug Application (ANDA) to begin selling its version of a sevoflurane inhaler, Abbott sued for infringement.  After a bench trial, the patent was found valid, but not infringed.  Abbott appealed.

The CAFC pointed its laser vision on the question of validity.  A prior reference had indicated that water could be combined with sevoflurane, but had not realized that the composition would work to prevent the acid buildup. Framed in this manner, the prior-art was found to be anticipatory:

Our cases have consistently held that a reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time.

The CAFC went-on to find that a claim directed to the newly discovered property of the prior art cannot support a patent because it is inherently disclosed by the art.

This rule holds equally well to process claims:

an inventor may not obtain a patent on a process having the same steps as a prior art process, in which the new process merely identifies a new, advantageous property of the prior art process.

Reversed on validity.

10 thoughts on “New Appreciation of Composition’s Properties are Not Patentable

  1. 9

    In Europe, of course, a Swiss-form second medical use claim would do just fine.

    So don’t go thinking that Europe is a strange patent-unfriendly place.

  2. 8

    It seems like poor claim drafting. From what I’ve seen, they were claiming a compound that was well known. I’ve read that water was considered an impurity, to be removed. So, while they rightfully could not get valid claims covering the compound, they should have been able to get valid claims directed to adding water, or intentionally leaving a specified quantity of water…

  3. 7

    Nothing new here. On the contrary, it’s good to see the inherency doctrine applied earnestly. And I thought I caught a whiff, while reading the case, of some business about product-by-process jurisprudence. I’ll need to give it another read.

  4. 4

    Doesn’t seem like the CAFC is broadening anything. They came out the same way on inherent anticipation in Smithkline v. Apotex (2005).

  5. 3

    Seems like Club Fed is trying to slightly broaden or at least further memorialize invalidity options in anticipation of KSR.

  6. 2

    Here we go with the US counterpart to the Exxon “friction-reducing fuel additive” case 20 years ago in Europe that got our “use” claims up and running. (Applt claimed the composition; the prior art had the same additive in the same fuel, but to inhibit corrosion). Exxon had made a valuable contribution and deserved a patent with claims commensurate with that contribution. The EPO gave them one. Isn’t the creative mayhem of 25 EPO Boards of Appeal, all of equal rank, and with no further right of appeal, just wonderful? Looking to the future, maybe Abbott’s US patent drafters should start now to include use claims in their new cases?

  7. 1

    Seems like a common sense decision. Patentable subject matter under 101 encompasses any NEW machine, composition of matter, etc… The mere fact that a previously known composition is discovered to have new properties does not make the composition itself new. Here, the combination of water and sevoflurane was shown to be known prior to the earliest ffective filing date of the patent at issue.

    In other words, isn’t this case merely restating the basic principals behind the inherency doctrine?

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