Intellectual Property Law

Prior art disclosure of compound does not anticipate substantially separated enantiomer

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit affirmed a district court's determination, after a bench trial, that the asserted claim of a patent had not been proven anticipated or obvious.  The district court held that while the prior art showed the chemical structure of the claimed compound, it did not describe the separation of the two enantiomers of the compound, nor did it describe the appropriate salt form to use in tableting the compound.   As a result, the claim was not anticipated.  Further, the district court held the claim was not obvious, because the separation of the enantiomers had the unexpected effect of separating the beneficial effects of the compound (produced by one enantiomer) with the harmful side effects of the compound (produced by the other enantiomer).

The Federal Circuit affirmed.  After a detailed analysis of the facts, the court agreed with the district court's analysis that the disclosure of the chemical structure of the compound in the prior art was insufficient to either anticipate or render obvious a claim directed to one of the two enantiomers, given the difficulty and unpredictability in separating enantiomers and the unexpected division of the beneficial and harmful effects between the two enantiomers of this particular compound.

More detail of Sanofi-Synthelabo v. Apotex, Inc. after the jump.

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Full post as published by FileWrapper on March 23, 2009 (boomark / email).