You can’t prepare for something that you can’t see. Newly recognized properties of previous discoveries or other inherent features not appreciated at the time of filing can sneak up on you after patent prosecution has ended, as was the case in the recent decision in Pharmacosmos A/S, v. Lutipold Pharmaceuticals, Inc. (IPR2015-01490).
The patent at issue, Lutipold’s US Patent No. 7,754,702, claims treatment of a condition characterized by iron deficiency by administering an iron carbohydrate complex. The petitioner, Pharmacosmos, was able to interweave expert testimony with its arguments to show that its prior art reference, Geisser, both explicitly and inherently anticipated the challenged claims. A property in the prior art is considered ‘inherent’ if it was necessarily present when the prior art was practiced, even if the inherent characteristic was not recognized at that time.
Thus, the question before the Board was whether Geisser inherently disclosed the patent owner’s iron deficiency treatment. What are the inherent properties of such carbohydrate complexes?
Although Geisser did not explicitly disclose an iron carboxymaltose complex, the petitioner asserted (relying on its expert testimony) that Geisser described the same “synthetic methods” of making the carboxymaltose carbohydrate complex as well as corresponding non-immunogenic “chemical properties” of these complexes. This argument was key for proving anticipation. The patent owner did not dispute the prior art methods of making the carbohydrate complex or comment on the prior art disclosing carboxymaltose complexes.
Ultimately, the Board agreed with the petitioner, demonstrating Pharmacosmos’ success in using expert testimony to advance its inherency arguments.
This case is a reminder for both petitioners and patent owners to watch for inherency arguments: Petitioners should recognize that expert testimony can be a powerful tool to advance inherency arguments, while patent owners should have multiple claims of differing scope (and preferably pending applications) covering important technologies to minimize the likelihood that inherency issues could undermine an IPR defense. Although it may be unavoidable, try not to overlook what’s inherently there.