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ARTICLE · 26 APRIL 2019

Claims Reciting Specific Method For Treating Specific Patients Found Patent Eligible

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 2017-1240 (Fed. Cir. Mar. 28, 2019), the Federal Circuit reversed a decision of invalidity under 35 U.S.C. § 101, holding instead that the method of treatment claims were patent eligible for claiming an application of a natural relationship and not the natural relationship itself.

United StatesIntellectual Property
Kara Specht
Kara Specht
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In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 2017-1240 (Fed. Cir. Mar. 28, 2019), the Federal Circuit reversed a decision of invalidity under 35 U.S.C. § 101, holding instead that the method of treatment claims were patent eligible for claiming an application of a natural relationship and not the natural relationship itself.

Endo's asserted patent taught a method for adjusting the oxymorphone dose in patients with renal impairment. Actavis, a co-defendant in the case, moved to dismiss Endo's infringement claims, arguing that the claims were ineligible as directed to a natural law under 35 U.S.C. § 101. The district court dismissed after finding the claims ineligible using the two-step Alice/Mayo framework.

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