Court Invalidates Improper Multiple Dependent Claims

In Trustees of the University of Pennsylvania v. Eli Lilly and Co., the U.S. District Court for the Eastern District of Pennsylvania refused to correct improper multiple dependent claims and instead held them invalid under 35 U.S.C. § 112, ¶ 5, and therefore not infringed. While some may consider improper multiple dependent claims as failing to comply with a mere formality, this case serves as a reminder that a court may consider any statutory requirement when assessing patent validity.

The Patent At Issue

The patent at issue was U. Penn.'s U.S. Patent No. 7,625,558, directed to methods of treating individuals having an erbB mediated tumor comprising administering an antibody that inhibits the formation of erbB protein dimers followed by exposing the patient to radiation treatment. The patent was granted with independent claims 1, 5-7, 11, 26 and 27. Claims 28-41 were multiple dependent claims. The invalidity of claims 32-40 was before the court on Defendants' Motion To Dismiss.

32. The method according to any one of claims 26 to 31 wherein the radiation is administered as multiple doses.

33. The method according to any one of claims 1 to 32, wherein said radiation is gamma radiation.

34. The method according to any one of claims 1 to 33, wherein said erbB protein mediated tumor is a p185 mediated tumor.

35. The method according to any one of claims 1 to 33, wherein said erbB protein mediated tumor is an EGFR mediated tumor.

36. The method according to any one of claims 1 to 35, wherein dimerization is inhibited by a physical alteration of the erbB protein monomer so that it is less thermodynamically disposed to form a dimer.

37. The method according to claim 36, wherein the physical alteration comprises a steric alteration of the erbB monomer.

38. The method according to claim 36 wherein the physical alternation comprises a conformational alteration of the erbB monomer.

39. The method according to claim 36, wherein the physical alteration comprises an electrostatic alteration of the erbB monomer.

40. The method according to any one of claims 1 to 39, wherein said tumor is an adenocarcinoma.

U. Penn asserted infringement by Lilly's Erbitux® (cetuximab) product.

Defendants' Motion to Dismiss

In their Memorandum of Law in Support of Defendants' Motion to Dismiss, Defendants alleged that "[c]laims 32-36, 40, and 41 are improper multiple dependent claims, meaning that they are (1) multiple dependent claims that (2) depend from claims that are, themselves...