In Re Montgomery
677 F.3d 1375
Fed. Cir.2012Background
- Montgomery filed the '824 application on April 29, 2005, claiming priority to UK applications from 1997 and 1998, directed to inhibitors of the renin-angiotensin system.
- Claims 42, 43, and 45 recite administering a RAS inhibitor with ClogP > 1 to patients diagnosed as in need of stroke treatment or prevention, specifically ramipril in claim 45.
- The examiner rejected the claims as anticipated by AIRE, Frampton, HOPE, and Gohlke, with Richer-identified relevance, all describing ramipril use in stroke-risk contexts.
- The Board affirmed the rejection on anticipation grounds, holding HOPE disclosures inherently anticipate the claimed method.
- Montgomery challenged the Board’s reliance on inherent anticipation and argued HOPE was a plan not actual administration; the Board did not modify its stance after rehearing.
- We review the Board’s legal conclusions de novo and the facts for substantial evidence, ultimately affirming the anticipation finding.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does HOPE inherently anticipate the claimed method? | Montgomery argues HOPE does not inherently disclose the claimed method. | Montgomery argues HOPE is only a design/proposal, not an inherent disclosure. | HOPE inherently anticipates the claims. |
| Is there an efficacy requirement in the preamble 'treatment or prevention of stroke'? | Montgomery contends no strict efficacy is required by the broad claim interpretation. | Board assumed an efficacy requirement in the preamble. | Even if an efficacy requirement exists, it is inherent in performing the steps; thus HOPE anticipates. |
Key Cases Cited
- Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1378 (Fed.Cir. 2001) (inherent anticipation expresses a purpose, not a required result)
- Cruciferous Sprout Lettuce Litig., 301 F.3d 1345 (Fed.Cir. 2002) (inherent characteristics in prior art can anticipatorily anticipate claims)
- Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373 (Fed.Cir. 2003) (inherency requires enabling disclosure; not necessarily actual reduction to practice)
- King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed.Cir. 2010) (inherency of effects from known administration can render antecedent disclosures anticipatory)
- Tilghman v. Proctor, 102 U.S. 707 (U.S. 1880) (early authority on inevitability/anticipation concept)