Opinion for the court filed by Circuit Judge DYK.
Dissenting opinion filed by Circuit Judge LOURIE.
DYK, Circuit Judge.
Hugh Edward Montgomery, John Francis Martin, and Jorge Daniel Erusalimsky (collectively, "Montgomery") appeal from a decision of the Board of Patent Appeals and Interferences ("Board") affirming the examiner's rejection of claims 42, 43, and 45 of U.S. Patent Application Serial No. 11/118,824 (the "'824 application") as anticipated. See Ex parte Montgomery ("Rehearing Decision"), No. 2011-000170, 2011 WL 514316 (B.P.A.I. Feb. 10, 2011); Ex parte Montgomery ("Board Decision"), No. 2011-000170, 2010 WL 4719114 (B.P.A.I. Nov. 18, 2010). We affirm.
Montgomery filed the '824 application on April 29, 2005, claiming priority to United Kingdom applications No. 9722026.3, filed October 17, 1997, and No. 9810855.8, filed May 20, 1998. The application is directed to inhibitors of the renin-angiotensin system ("RAS"), which is "important in the maintenance and control of blood pressure as well as the regulation of salt and water metabolism." J.A. 225. As the '824 application's specification notes, RAS inhibitors have been administered to treat high blood pressure, known as hypertension,
The claims at issue recite administering RAS inhibitors to patients diagnosed as in need of stroke treatment or prevention:
J.A. 1 (emphases added). The examiner rejected these claims as anticipated by each of four prior art references: AIRE,
Hypertension is a known risk factor for stroke. Board Decision, 2010 WL 4719114, at *4. AIRE describes a study in which about 2000 "patients who had shown clinical evidence of heart failure," many of whom suffered from hypertension, were treated with ramipril or a placebo. AIRE at 821-22. In particular, 289 (29%) of the patients receiving ramipril had hypertension. Id. at 822. The study found "overall a 27% reduction in the risk of death" and a 19% reduction in the risk of "the first validated event in any individual patient— namely, death, reinfarction, stroke, or development of severe/resistant heart failure,"
HOPE describes the design of "a large, simple randomized trial of ... ramipril ... and vitamin E ... in the prevention of myocardial infarction, stroke, or cardiovascular death," which recruited "[o]ver 9000 [patients] at high risk for cardiovascular events such as myocardial infarction and stroke." HOPE at 127. HOPE discloses that at the time of its publication, all 9541 patients had been randomized and had been receiving ramipril or a placebo for at least one month.
Finally, Gohlke describes a study of "the effects of ... ramipril on functional and biochemical cardiac parameters in stroke-prone spontaneously hypertensive rats," which found that the treatment "improves cardiac function even at low doses." Gohlke at 411. Richer further explains that "[t]he stroke-prone spontaneously hypertensive rat ... is an experimental model that has been widely used to investigate the potential preventive effects vs stroke and mortality of numerous antihypertensive agents. Among the latter, angiotensin I-converting enzyme inhibitors, angiotensin II ATI-receptor blockers and calcium antagonists have proven to be very effective." J.A. 85.
The Board affirmed the examiner's rejection of all three claims as anticipated by each of these prior art references. Board Decision, 2010 WL 4719114, at *12. The Board found that claim 42 has two elements: (1) "to administer an inhibitor of the rennin-angiotensin system," and (2) "the patient population receiving the inhibitor... encompasses patients diagnosed as required stroke treatment or prevention." Id. at *4. The Board explained that each reference teaches administration of ramipril to stroke-prone patients: "AIRE identified patients with hypertension who are known to be at risk of stroke, and treated this patient population with ramipril," "Frampton teaches treatment of hypertensive patients with ramipril" (where "hypertension is a known `risk factor for stroke'"), "the HOPE study was clearly enabled to treat patients, including patients with previous stroke, with ramipril,"
While the Board did not rule directly on whether Montgomery's claims required that the administration be effective at treating or preventing stroke, it appeared to assume that they did include such a requirement. The Board rejected Montgomery's argument that none of the references demonstrated that ramipril actually treats or prevents stroke, noting that ramipril inherently treats or prevents stroke, and "[i]t matters not that those of ordinary skill heretofore may not have recognized these inherent characteristics." Id. at *4 (quoting In re Cruciferous Sprout Litig., 301 F.3d 1343, 1350 (Fed.Cir.2002)) (internal quotation marks omitted).
Montgomery filed a request for rehearing, arguing that AIRE and Frampton did not teach administration to patients diagnosed as at risk of stroke because stroke is only one of the afflictions caused by hypertension; that HOPE was merely a proposal for future research that was not enabled; and that Gohlke could not anticipate because the claim term "patient" should be limited to human beings. See Request for Rehearing, In re Montgomery, No. 2011-000170 (B.P.A.I. Jan. 24, 2011). The Board declined to modify its original decision. Rehearing Decision, 2011 WL 514316, at *4. The Board noted that "[i]t does not matter whether [AIRE] appreciated that ... treatment [with ramipril], which was undisputedly actually performed on 289 patients with hypertension and 230 patients with previous myocardial infarct, would treat or prevent stroke," and that HOPE "was clearly enabled to treat patients, including patients with previous stroke, with ramipril." Id. at *2.
Montgomery timely appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
Under the Administrative Procedure Act, we review the Board's legal conclusions without deference and set aside conclusions that are "not in accordance with law," and we review its findings of fact to determine if they are "unsupported by substantial evidence." 5 U.S.C. § 706(2); see Dickinson v. Zurko, 527 U.S. 150, 162-65, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999).
"Determining whether claims are anticipated involves a two-step analysis. The first step involves construction of the claims of the patent at issue. Claim construction is a question of law reviewed de novo." In re Aoyama, 656 F.3d 1293, 1296 (Fed.Cir.2011). "During examination, `claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.'" In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.2004) (alteration in original) (quoting In re Bond, 910 F.2d 831, 833 (Fed.Cir. 1990)). The broadest reasonable interpretation, like claim construction in the infringement context, is a question of law that we review de novo. In re NTP, Inc., 654 F.3d 1268, 1274 (Fed.Cir.2011). "The second step [of an anticipation analysis] involves comparing the claims to the prior art. Anticipation is a question of fact reviewed for substantial evidence." In re Aoyama, 656 F.3d at 1296. A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed.Cir.2010). A reference may anticipate inherently if a claim limitation
The contested elements of claim 45 are the administration of ramipril (1) "to a patient diagnosed as in need of [stroke] treatment or prevention," (2) where such administration is "for the treatment or prevention of stroke or its recurrence."
We first examine the requirement that the administration be "to a patient diagnosed as in need of [stroke] treatment or prevention." Montgomery does not contest that the patients in HOPE satisfy this claim requirement. HOPE explicitly disclosed the administration of ramipril to patients "at high risk for cardiovascular events such as myocardial infarction and stroke," and the eligibility criteria included patients with previous stroke. HOPE at 127-28. We see no error in the Board's uncontested conclusion that HOPE discloses the administration of ramipril to patients diagnosed as in need of stroke treatment or prevention.
We next turn to the preamble requirement that the method be "for the treatment or prevention of stroke or its recurrence." The Board did not rule directly on whether the broadest reasonable interpretation of the claims required that the treatment or prevention be effective or whether it was sufficient that the administration be designed to treat or prevent stroke.
We are skeptical that a proper interpretation of the claims would include an efficacy requirement. In Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., we construed a similar method-of-treatment claim—involving "[a] method for reducing hematologic toxicity" by administering taxol to a cancer patient—and held that it "merely express[ed] a purpose of reducing hematologic toxicity" rather than requiring a particular result. 246 F.3d 1368, 1371, 1375 (Fed.Cir.2001). Such a construction is even more appropriate here in the examination context, where we apply the "broadest reasonable interpretation
We need not resolve this question, however, for we agree with the Board that even if the claim includes an efficacy requirement, efficacy is inherent in carrying out the claim steps. See Rehearing Decision, 2011 WL 514316, at *2. We agree with the dissent that a result is only inherent if it inevitably flows from the prior art disclosure, but there is no question here that treating stroke-prone patients with ramipril does in fact inevitably treat or prevent stroke. And Montgomery does not dispute that ramipril is in fact effective at preventing or treating stroke, which is the entire premise of his patent.
We have repeatedly held that "[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent." Bristol-Myers Squibb, 246 F.3d at 1376. As we stated in Cruciferous Sprout, 301 F.3d at 1350, "[i]t matters not that those of ordinary skill heretofore may not have recognized the[] inherent characteristics of the [prior art]."
In King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1270 (Fed.Cir. 2010), one of the claims covered "a method of increasing the oral bioavailability of metaxalone" by "administering to the patient a therapeutically effective amount of metaxalone in a pharmaceutical composition with food." We noted that according to the patent itself, "the natural result of taking metaxalone with food is an increase in the bioavailability of the drug," and that "[t]he prior art discloses taking metaxalone with food," so the preamble was "inherently anticipated." Id. at 1275-76. Similarly, in Cruciferous Sprout, the claims at issue included "[a] method of preparing a food product rich in glucosinolates, comprising germinated cruciferous seeds ... and harvesting sprouts prior to the 2-leaf stage, to form a food product comprising a plurality of sprouts." 301 F.3d at 1345. We agreed that "rich in glucosinolates" is a claim limitation, but found the claims inherently anticipated because the patentee merely recognized properties that "necessarily have existed as long as sprouts themselves." Id. at 1347, 1350.
HOPE discloses a protocol for the administration of ramipril to stroke-prone patients, and administering ramipril to stroke-prone patients inevitably treats or prevents stroke. See HOPE at 127. Thus, HOPE inherently anticipates the claims at issue.
To be sure, as the dissent points out, "[a]n invitation to investigate is not an inherent disclosure." Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367 (Fed.Cir.2004).
We thus affirm the rejection of claims 42, 43, and 45 of the '824 application as anticipated by HOPE. Because we affirm the Board's decision on this ground, we need not reach the issue of whether the claims are anticipated by the other prior art considered by the Board.
No costs.
LOURIE, Circuit Judge, dissenting.
I respectfully dissent from the majority's decision to affirm the rejection by the United States Patent and Trademark Office ("PTO") of pending claims 42, 43, and 45 for anticipation by inherency.
Inherency is a very tricky concept in patent law. Its salutary goal is to prevent subject matter that is effectively in the public's possession from being retrieved by a patent and withdrawn from the public domain. On the other hand, its downside is withholding patent protection from that which the public knew nothing about until a later inventor found it. A case cited by the majority, Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373 (Fed.Cir. 2003), illustrates the problem. A claimed compound not known to the art was held to be anticipated by inherency when it was found to be a metabolite of a prior art compound. Of course, many compounds administered to humans and animals do metabolize in some manner rather than being fully excreted as such. In Schering, however, the prior art (1) did not disclose the later-claimed metabolite; (2) did not disclose any of the prior art compound's metabolites; and (3) did not even disclose that the prior art compound could metabolize upon administration. Id. at 1376. On those facts, the court nonetheless concluded that the later-claimed compound was necessarily "in the public's possession," and thus was anticipated by inherency. Id. at 1380 (internal quotation marks omitted); see also Schering Corp. v. Geneva Pharm., Inc., 348 F.3d 992, 995-96 (Fed. Cir.2003) (Lourie, J., dissenting from denial of petition for rehearing en banc).
An unbounded concept of inherency, as Schering illustrates, threatens to stymie
The keystone of the inherency doctrine is inevitability. For anticipation by inherency, a later-claimed invention must have necessarily resulted from the practice of a prior art reference. Our precedent has been steadfast in this strict requirement of inevitability. See, e.g., Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed.Cir.2011) ("Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." (internal quotation marks omitted)); Hansgirg v. Kemmer, 26 CCPA 937, 102 F.2d 212, 214 (1939) (same). Absent inevitability, inherency does not follow even from a very high likelihood that a prior art method will result in the claimed invention. See, e.g., Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed.Cir. 1995) (holding that even though the defendant's experts reproduced a prior art method "thirteen times and each time they made [the claimed] crystals," the patentee's chemists twice produced different crystals from the same method, thus precluding inherency).
Were inevitability not required for inherency, a mere proposal for further experimentation could anticipate a claimed invention. That is not the law, however. There is nothing inevitable about a proposal. On this point, our precedent is straightforward: "An invitation to investigate is not an inherent disclosure." Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367 (Fed.Cir. 2004). This maxim applies a fortiori in arts necessitating laboratory research, clinical studies, and other trial-and-error experimentation. In the unpredictable arts, rarely if ever will an untested proposal necessitating further study and optimization meet the stringent inevitability requirement of inherent anticipation. Although a patent should not be awarded if a claimed invention is previously described in a printed publication or patent, or obvious thereover, innovation should not be impeded by mere speculation.
On the facts of this case, none of the four cited references describes the claimed invention or the practice of a method that inherently, necessarily, carries out the claimed processes. The claims at issue recite a method for the treatment or prevention of stroke or its recurrence comprising administering ramipril to a patient diagnosed as in need of such treatment or prevention. As the majority acknowledges, the references do not expressly disclose this claimed method. Nor is the claimed method an inherent result of carrying out what the references describe.
The HOPE paper, the only reference relied on by the majority, describes a plan designed to administer a combination of ramipril and vitamin E to patients at risk of a major vascular event including myocardial infarction, stroke, or death from cardiovascular disease. But HOPE (an acronym for Heart Outcomes Prevention Evaluation) truly expresses only a hope,
The majority states that HOPE discloses a "protocol" for the administration of ramipril. Majority Op. at 1381. The fact that HOPE is a planned study, therefore, is not in dispute. The majority's conclusion, however, rests on its finding that such administration, if carried out, would inherently treat or prevent stroke. That finding is unsupported by the record. As the majority correctly notes, the results of the planned HOPE study, published in the New England Journal of Medicine years after Montgomery's priority date and not of record in this case, are "irrelevant to an anticipation analysis." Majority Op. at 1378. Nevertheless, to the extent that the majority's reasoning was infected by its consideration of this non-record evidence, it is worth noting two things. First, the authors of the New England Journal of Medicine paper acknowledge having subsequently altered the prior art HOPE study design "to account for the impact of a possible lag before treatment had its full effect," thus demonstrating that the prior art HOPE study was, at best, a plan subject to modification. See The Heart Outcomes Prevention Evaluation Study Investigators, Effects of an Angiotensin-Converting-Enzyme Inhibitor, Ramipril, on Cardiovascular Events in High-Risk Patients, 342 New Eng. J. Med. 145, 146 (2000). Second, that the results of the HOPE study merited publication in the New England Journal of Medicine, a prestigious and selective peerreviewed medical journal of the highest caliber, strongly imply that the study's results were anything but preordained.
The majority further states that even if HOPE merely proposed administering ramipril for treatment or prevention of stroke (without actually doing so), it would still anticipate. Majority Op. at 1381-82. The majority's view is flawed. A description of a process, even if not carried out, is an anticipation of that process. But a mere description of a process that, if it had been carried out, might yield a particular undisclosed result is not an inherent anticipation of that result. Stated somewhat differently, inherency requires description of action that inevitably produces a result, not merely description of action that might have been carried out, but was not, and might have yielded a particular result, but did not. The HOPE reference is only a description of what has not been carried out; whether or not, if carried out, it would inherently accomplish the claimed result is not before us, for HOPE is only a plan.
As the majority notes, HOPE does expressly disclose an actual administration of a low dose of ramipril for a short time period as part of an initial "randomization" step. But there is no evidence in the record to prove that HOPE discloses administration sufficient to inevitably treat or prevent stroke, and the PTO does not argue otherwise. HOPE, therefore, clearly fails to describe any administration of ramipril at a dose and for a period of time that would inherently lower the risk of stroke.
Finally, the majority appears to criticize the disclosure of Montgomery's application. It must be noted that the only ground of rejection by the Board, and thus the only ground of rejection properly before us on appeal, is anticipation by inherency. Whether Montgomery's pending claims are patentable on other grounds, such as enablement or obviousness, must be dealt with by the PTO in the first instance.
For the foregoing reasons, I respectfully dissent.
