So, You Invented A Numerical Range

• Published date: 08 February 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr Sandip H. Patel

In Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A., Appeals 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021), the Federal Circuit affirmed a Patent Trial and Appeal Board's final decision canceling claims in Indivior's patent claiming a polymer matrix-containing film. Certain claims in the patent recited an amount of polymer matrix inadequately disclosed, according to the Board, in a predecessor application to which the patent claimed priority. As a result, the claims' effective filing date was so late that prior art published between the patent's actual filing date and its earliest claimed priority date rendered the claims unpatentable. Here the prior art was none other than the Patent Office's publication of one of the claimed priority applications. Thus, a specification insufficient to describe these claims was sufficient to anticipate them. This case provides a good example of how-during inter partes review-to indirectly challenge a patent's written description and apply an earlier publication of that description to attack the patent's claims.

Indivior's patent issued in 2017 from the fifth continuation in a series of applications (including four abandoned applications) dating back to a first continuation filed in 2013, and to an earlier application filed in 2009, which published in 2011. The patent claims recited embodiments of a film that includes "about 40 wt % to about 60 wt % of a water-soluble polymeric matrix" (claim 1), "about 48.2 wt % to about 58.6 wt %" of the matrix (dependent claims 7 and 12), and "about 48.2 wt %" of the matrix (dependent claim 8). The Board and court had to decide whether "Indivior can get the benefit of that 2009 filing date for the claims at issue." Indivior, Slip Op. at 2. The Board found that the 2009 application did not disclose the recited ranges, that Indivior's expert's testimony to the contrary was not credible, and that the skilled person would have been led away from the recited ranges because the 2009 application stated that the "film may contain any desired level of self-supporting film forming polymer." Id. at 5 (emphasis added). The limited specification support (e.g., exemplary film compositions) was sufficient, however, to anticipate the claims reciting ranges. See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (stating the "elementary principle of patent law that when, as by a recitation patent claims. of ranges or otherwise, a claim covers several compositions, the claim is...