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Schering Corp. v. Geneva Pharm., Inc. - 339 F.3d 1373 (Fed. Cir. 2003)

Rule:

A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention. Moreover, a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.

Facts:

The prior art '233 patent covered the antihistamine loratadine. Claims 1 and 3 of the '716 patent covered a metabolite of loratadine, descarboethoxyloratadine (DCL). The summary judgment evidence showed that DCL inevitably formed from loratadine in the human body. The competitors sought to market generic versions of loratadine once the '233 patent expired. The district court construed claims 1 and 3 of the '716 patent to cover DCL in all its forms, including forms metabolized within the human body. It found that while the '233 patent did not expressly disclose DCL and did not refer to metabolites of loratadine, the '233 patent anticipated claims 1 and 3 of the '716 patent under 35 U.S.C.S. § 102(b).

Issue:

Did the district court err in ruling that that claims 1 and 3 of the '716 patent were invalid as anticipated by the '233 patent, which had expired?

Answer:

No

Conclusion:

The district court did not err in finding that the '233 patent discloses administering loratadine to a patient, and that DCL forms as a natural result of that administration. The district court correctly concluded that DCL is inherent in the prior art. Without any genuine issues of material fact, the district court correctly granted summary judgment that claims 1 and 3 are invalid as anticipated by the '233 patent.

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