Fresh From the Bench: Latest Federal Circuit Court Cases
CASES OF THE WEEK
AstraZeneca AB v. Mylan Pharmaceuticals Inc., Appeal No. 2021-1729 (Fed. Cir. Dec. 8, 2021)
Our Case of the Week again focuses on numerical values in claims. Last week we addressed a case involving whether there was written description support for a number in a claim, and we addressed a similar issue the week before. This week, our case focuses on the meaning and scope of a number in a claim.
In an appeal from the United States District Court for the Northern District of West Virginia, the Federal Circuit addressed the district court’s claim construction of “0.001%.”
Judge Stoll, writing for the majority, held that the district court erred by construing “0.001%” according to its plain and ordinary meaning, that is, expressed with one significant digit, and instead adopted Mylan’s construction that “0.001%” means precisely “0.001% w/w” (weight per weight) PVP with only “minor variations.”
Judge Taranto dissented in part, concluding “0.001%” should be construed to have its significant-figure meaning, i.e., the interval 0.0005% to 0.0014%, as the district court held.
Teva Pharmaceuticals USA, Inc. v. Corcept Therapeutics, Inc., Appeal No. 2021-1360 (Fed. Cir. Dec. 7, 2021)
In an appeal from a Patent Trial and Appeal Board (“Board”) decision, the Federal Circuit affirmed on the grounds of failure to show obviousness in relation to the asserted claims of a pharmaceutical patent.
Corcept sued Teva for infringement. Teva then sought post-grant review of the asserted claims, arguing that such claims were obvious. The Board found that Teva failed to prove obviousness. On appeal, Teva first argued that the Board failed to properly apply the reasonable expectation of success standard, instead requiring precise predictability. The Court disagreed, explaining that “the Board applied the correct standard, requiring only a reasonable expectation of success and tying its analysis to the scope of the claimed invention.” Second, Teva argued that the Board erred in declining to apply the prior art cases because it found “Teva had failed to prove the general working conditions disclosed in the prior art encompassed the claimed invention.” The Court disagreed, explaining that “[s]ubstantial evidence support[ed] the Board’s finding that the general working conditions disclosed in the prior art did not encompass the claimed invention, i.e., there was no overlap in ranges [(prior art range and claimed range)].” Accordingly, the Court affirmed the Board’s decision, finding Teva failed to prove obviousness.