In Schering Corp. v. Geneva Pharm., Inc. (Fed. Cir. August 1, 2003), the Federal Circuit ruled that the explicit disclosure of a prior art reference entailed inherent disclosure which was sufficient by itself to anticipate a claimed invention.

The patent portfolio of Schering included a first patent which issued more than a year before the priority date of a second patent and therefore qualified as prior art with respect to the second patent.  The first patent disclosed the antihistamine loratadine, the active component of a pharmaceutical.  The second patent claimed a metabolite of loratadine, called descarboethoxyloratadine (DCL).

A dispute arose whether the first patent could anticipate the claims of the second patent in view of:

• the lack of explicit disclosure of DCL in the first patent; and
• the first patent’s explicit disclosure of administration of loratadine to a patient.

The Federal Circuit held that the disclosure of the first patent anticipated and therefore rendered invalid the claims of the second patent because the first patent disclosed administering loratadine to a patient, and DCL forms as a natural result of that administration.  A limitation or the entire invention is inherent and in the public domain if it is the natural result flowing from the explicit disclosure of the prior art.

Recommendation:

To evaluate viability of claim language of interest to you, attention must be given to:

• the explicit disclosure of a prior art reference;
• the explicit disclosure in combination with the inherent disclosure of the reference; and
• the inherent disclosure as a standalone prior art proposition.

August 26, 2003

Text Copyright © 2003 Bob Brill et al.

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