The Concentration Range In An Independent Claim Must Include The Concentrations In The Dependent Claims

In Alcon Research, Ltd. v. Apotex Inc., No. 11-1455 (Fed. Cir. Aug. 8, 2012), the Federal Circuit reversed the district court's holding that claims 1-3 and 5-7 of U.S. Patent No. 5,641,805 ("the '805 patent") would not have been obvious over the prior art, and affirmed the district court's holding that claims 4 and 8 are not invalid.

The '805 patent is directed to a method for treating allergic eye disease in humans comprising stabilizing conjunctival mast cells, the primary cells involved in allergic reactions, by topically administering an olopatadine composition.  Both the olopatadine compound itself and a method of treating allergies using the class of chemicals that encompasses olopatadine were already patented at the time of invention.  Distinguishing itself from the prior art, the specification states that a compound's activity in a rodent's conjunctival mast cells or in mast cells located elsewhere in the body cannot predict its ability to stabilize mast