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ARTICLE · 28 AUGUST 2006

"Therapeutically Effective" Need Not Encompass Curing Disease

McDermott Will & Emery
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In a split decision based exclusively on the intrinsic evidence, the U.S. Court of Appeals for the Federal Circuit held, inter alia, that the claim term "therapeutically effective amount" in one patent did not limit the claim to products effective in curing disease and remanded to determine whether a prior art reference anticipated the claim.

United StatesIntellectual Property
Michelle Cai
Michelle Cai
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In a split decision based exclusively on the intrinsic evidence, the U.S. Court of Appeals for the Federal Circuit held, inter alia, that the claim term "therapeutically effective amount" in one patent did not limit the claim to products effective in curing disease and remanded to determine whether a prior art reference anticipated the claim. Amgen Inc. v. Hoechst Marion Roussel, Inc., Case No. 05-1157 (Fed. Cir. Aug. 3, 2006) (Schall, J.; Michel, C.J., dissenting in part).

Amgen is the owner of five U.S. patents directed to recombinant deoxyribonucleic acid (DNA) technology relating to the production of the hormone erythropoietin (EPO). All five patents share a common specification and descend from a single parent application. In 1997, Amgen brought a declaratory judgment action against Hoechst Marion Roussel, Inc. (now known as Aventis Pharmaceuticals Inc.) (HMR) and Transkaryotic Therapies, Inc. (TKT) (collectively, HMR/TKT) in the United States District Court for the District of

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