Federal Circuit Reverses District Court Anticipation Decision Combining Two Prior Art References

Feb 18, 2020

Reading Time : 2 min

Galderma Laboratories sued Teva Pharmaceuticals under the Hatch-Waxman Act for infringement of three patents that all generally claim methods of treating rosacea through topical administration of a “pharmaceutical composition comprising about 1% by weight ivermectin.” The asserted claims also contained limitations for specific efficacy benchmarks that result from the treatment methods. Galderma listed the patents in the Orange Book for its Soolantra® product. At the district court, Teva challenged the validity of the asserted claims on multiple anticipation and obviousness grounds, as well as for lack of written description. Of note here, Teva argued that the asserted patents were anticipated by the “McDaniel” reference, which disclosed a “1%-5% ivermectin” general formulation. The parties stipulated that a second reference, Manetta, enabled McDaniel “as to the formulation” in the asserted claims. The parties also agreed that Manetta disclosed the formulation for Soolantra®.

Following a bench trial, the district court found that McDaniel anticipated the asserted claims. More specifically, the district court found McDaniel expressly disclosed the method of treatment and formulation limitations. The district court’s finding that McDaniel disclosed the formulation rested largely on the parties’ agreement that Manetta enabled McDaniel as to the formulation. The district court then reasoned that because Manetta enabled the formulation in McDaniel, one of ordinary skill in the art could practice the method of McDaniel with the formulation of Manetta without undue experimentation. And as a result, the district court found that McDaniel inherently disclosed the efficacy limitations. The district court declined to reach Teva’s remaining defenses.

Galderma appealed the district court’s decision, and shortly thereafter, Teva launched its generic drug product. Galderma then filed an emergency motion for a stay pending appeal, which the district court granted, thereby enjoining Teva from entering the market. That injunction was subsequently stayed by the Federal Circuit.

On appeal, Galderma argued the district court erred when it found the asserted claims anticipated in view of McDaniel and Manetta. The Federal Circuit agreed, and held that Manetta’s enablement of McDaniel only meant that a person skilled in the art could practice the formulations in McDaniel. However, it did not mean, contrary to the district court’s findings, that McDaniel disclosed the claimed method of treatment with the specific formulation that was disclosed in Manetta. And because McDaniel does not disclose the specific formulations necessary to achieve the efficacy limitations, it also fails to inherently disclose those limitations. Thus, the Federal Circuit reversed the decision of the district court, and remanded the case for further consideration of Teva’s remaining invalidity defenses.

Practice tip: As the Federal Circuit explained, “[w]hether a prior art reference is enabled is a separate question from whether it discloses, expressly or inherently, the claimed limitations at issue.” Anticipation may only be found based on the disclosures of a single reference. Therefore, it is important when presenting an anticipation defense that points to secondary references to clarify the specific purposes for which those references are cited.

Galderma Labs., L.P. v. Teva Pharm. USA, Inc., C.A. No. 19-2396 (Fed. Cir. Jan. 29, 2020).

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.