Optional Inclusion in Prior Art Reference Defeats Express Exclusion of Element in Anticipation Analysis

The U.S. Court of Appeals for the Federal Circuit affirmed summary judgment holding claims for the composition of a vitamin supplement invalid and, therefore, not infringed because the claims, which stated a requirement the composition be "essentially free of antioxidants," were anticipated and obvious in light of an earlier European patent application that "optionally includes" antioxidants. Upsher-Smith Lab. v. Pamlab, LLC, Case No. 04-1405 (Fed Cir. June 17, 2005) (Rader, J.).

Upsher-Smith sued PamLab and claimed PamLab was infringing Upsher-Smith’s patents covering vitamin supplements that are essentially free of antioxidants. The relevant claims of the patent recite vitamin supplement compositions containing folic acid and B12 that are "essentially free of antioxidants." The prior art both taught vitamin compositions that included adding other vitamins and antioxidants for additional health benefits and recognized that several substances known to be antioxidants destroy certain