On Tuesday, a divided panel of the Fed. Cir. found that Allergan’s claimed method of reducing the number of daily topical doses of brimonidine to treat glaucoma from 3 to 2 doses by administering a composition containing 0.2% brimonidine and 0.5% timolol, as unobvious, even though both drugs were known to be effective to treat glaucoma and the two drugs had been administered serially twice a day rather than three times a day. Allergan, Inc. v. Sandoz Inc., App. No. 2011-1619, -1620, -1635, -1639 (Fed. Cir. May 1, 2013). The majority of the panel reached this conclusion even after finding that the composition claims were obvious in view of the art, and after recognizing that an inherency doctrine may apply to an otherwise obvious claim, as well as to support an anticipation rejection.
In other words, the dissent (Dyk) “would find [the method claim] obvious on the grounds that it merely claims the result of treatment with an obvious composition.” The majority (Proust and O’Malley) distinguished decisions in which “patentee claimed either a previously unknown result or an undisclosed inherent property of an otherwise anticipated claim, citing Bristol-Myers Squibb v. Ben Venue Labs., 246 F.3d 1368 (Fed. Cir. 2001). In this decision, the court considered a claim to reduce the side-effects of a known anti-cancer drug by using a specific dosing regimen. The process, in its entirety, was found in the prior art, and the B-M court stated that “[i]n the context of anticipation, ‘[n]ewly discovered results of known process directed to the same purpose are not patentable because such results are inherent.’” Id. At 1376.
