{"id":2039,"date":"2018-05-23T19:59:41","date_gmt":"2018-05-23T23:59:41","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2039"},"modified":"2018-05-28T21:35:49","modified_gmt":"2018-05-29T01:35:49","slug":"the-novelty-of-an-optical-isomer-is-not-negated-by-the-prior-art-disclosure-of-its-racemate","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2039","title":{"rendered":"The Novelty of an Optical Isomer is not Negated by the Prior Art Disclosure\u00a0of its Racemate"},"content":{"rendered":"

In UCB, Inc. v. Accord Healthcare, Inc.<\/a>, [2016-2610, 2016-2683, 2016-2685, 2016-2698, 2016-2710,\u00a02017-1001] (May 23 2018), the Federal Circuit affirmed the district court’s determination that UCB’s patents on lacosamide, an anti-epileptic drug, were not invalid for obviousness-type double patenting, obviousness, and\u00a0anticipation.<\/p>\n

On the issue of double patenting, the Federal Circuit noted that in chemical cases, the double patenting\u00a0inquiry is not whether a person of ordinary skill in the art\u00a0would select the earlier compound as a lead compound,\u00a0but rather whether the later compound would have been
\nan obvious or anticipated modification of the earlier\u00a0compound — the underlying patent in the double\u00a0patenting analysis need not be prior art to the later claim.\u00a0 The Federal Circuit found that\u00a0the\u00a0district court did not err by focusing its double patenting\u00a0analysis on the claims\u2019 differences, as well as the claims\u00a0as a whole.\u00a0 The Federal Circuit said that\u00a0proving that a claim is invalid for obviousness-type double\u00a0patenting \u201crequires identifying some reason that would\u00a0have led a chemist to modify the earlier compound to\u00a0make the later compound with a reasonable expectation of\u00a0success.\u00a0 Acknowledging that it was\u00a0a close case, because it discerned no clear error in\u00a0the district court\u2019s underlying fact finding that there\u00a0would have been no reasonable expectation of success in making the modifications needed to make the claimed combination, the Federal Circuit agreed with the district court that\u00a0the asserted claims of the ‘551 patent were patentably\u00a0distinct from the \u2019301 patent.<\/p>\n

With respect to obviousness, the Federal Circuit applied a lead compound analysis, rejecting the proposition that the test does not apply in purification cases.\u00a0 The lead compound analysis first\u00a0determines whether a chemist of ordinary skill would have selected the asserted prior art compounds as\u00a0lead compounds, or starting points, for further development\u00a0efforts, and then determines \u201cwhether the prior art would have supplied one of ordinary skill in\u00a0the art with a reason or motivation to modify a lead\u00a0compound to make the claimed compound with a reasonable\u00a0expectation of success.\u00a0 The Federal Circuit found substantial evidence supported the district court’s conclusion that a person of ordinary skill in the art would not have selected either of the proferred lead compounds.<\/p>\n

On anticipation, appellants argued that because the prior art disclosed the chemical structure, it\u00a0it necessarily disclosed\u00a0the R-enantiomer (lacosamide) recited in claim 9 of the\u00a0\u2019551 patent.\u00a0 The district court concluded that the prior art disclosed neither\u00a0the R-enantiomer, nor any of its characteristics.\u00a0 The Federal Circuit noted that\u00a0the novelty of an optical isomer is not negated by the prior art disclosure\u00a0of its racemate, and that the references specifically stated that it prepared the racemic amino acid derivatives rather\u00a0than the individual enantiomers.\u00a0 Thus, the Federal Circuit found no clear error in the finding of no anticipation.<\/p>\n","protected":false},"excerpt":{"rendered":"

In UCB, Inc. v. Accord Healthcare, Inc., [2016-2610, 2016-2683, 2016-2685, 2016-2698, 2016-2710,\u00a02017-1001] (May 23 2018), the Federal Circuit affirmed the district court’s determination that UCB’s patents on lacosamide, an anti-epileptic drug, were not invalid for obviousness-type double patenting, obviousness, and\u00a0anticipation. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[42,75,12],"tags":[],"class_list":["post-2039","post","type-post","status-publish","format-standard","hentry","category-anticipation","category-double-patenting","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2039","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2039"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2039\/revisions"}],"predecessor-version":[{"id":2040,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2039\/revisions\/2040"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2039"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2039"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2039"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}