CPLRG™ 0004 - Janssen Pharmaceutica N.V. v. Teva Pharmaceuticals USA, Inc. - Sep. 25, 2009

583 F.3d 1317, 2009 U.S. App. LEXIS 21166 (Fed. Cir. 2009) (DYK & Mayer; GAJARSA, dissenting)


MAJOR ISSUES: Utility–Enablement–Method of Treating Disease

A patent claimed a method of treating Alzheimer’s disease by administering the compound galanthamine.  uspatno4663318 A district court correctly held the patent invalid for lack of enablement–even though tests completed after the patent issued confirmed that galanthamine was an effective Alzheimer’s treatment.  The patent set forth no actual test results, but it discussed prior art studies on galanthamine, described a good animal model for testing Alzheimer’s drugs, and stated as a hypothesis that galanthamine would be effective against Alzheimer’s disease.  Nevertheless, the patent failed to set forth a credible utility.

COMMENT: This decision is questionable in view of In re Brana, 51 F.3d 1560, 1568 (Fed. Cir. 1995).

For a discussion of specific utility, see Chisum Patent Law Digest § 1420; Chisum on Patents § 4.02.

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