Tag Archives: Patents

Inherency & Therapeutic Mechanisms: Reviewing In re Couvaras – (With No-Frills Diagrams)

Q:  When can you patent a composition’s mechanism of action?

A:  When the mechanism is not inherent in a known use of the composition.

“Reciting the mechanism for known compounds to yield a known result cannot overcome a prima facie case of obviousness, even if the nature of that mechanism is unexpected.”

In re Couvaras, 22-1489 (Fed. Cir., 2023)

In re Couvaras, 22-1489, 2023 WL 3984753 (Fed. Cir., June 14, 2023)

Precedential Opinion by Circuit Judge Lourie; joined by Circuit Judges Lourie, Dyk, and Stoll

The United States Court of Appeals for the Federal Circuit (CAFC) agreed with the Patent Trial & Appeals Board (PTAB), and the USPTO examiner, that claims in U.S. Patent Application No. 15/131,442 (US2016/228,393), which recites methods of increasing prostacyclin release in the systemic blood vessels of a human with essential hypertension to improve vasodilation, were obvious because the claims relate to combatting hypertension with known antihypertensive agents and merely disclose their previously unappreciated mechanism of action.”

High Level Summary

The prior art taught that GABA-a agonists and ARBs reduce anti-hypertension. Dr. Couvaras discovered that GABA-a agonists and ARBs reduce anti-hypertension, in part, because they increase prostacyclin and promote vasodilation. Dr. Couvaras applied for a patent claiming a method of increasing prostacyclin in an individual with hypertension to improve vasodilation by providing an ARB and a GABA-a agonist.  However, the USPTO rejected the claims because the element of increasing prostacyclin was inherent in the well-known prior art method of independently treating hypertension with an ARB or a GABA-a agonist. 

Visualizing the case with diagrams

Now let’s skeletonize the elements of this case down to arrow diagrams. We don’t need too many facts getting in the way of this good story. 🙂 *

Claim 11 (abridged): A method of increasing prostacyclin in an individual with hypertension to improve vasodilation by providing an ARB and a GABA-a agonist. 

A = Providing an ARB and a GABA-a agonist 

X = Increasing prostacyclin

B = Vasodilation (treating hypertension)

* But seriously, although I am scientist reluctant to loose any nuance, technical terms such as Angiotensin II Receptor Blocker (“ARB”) can be distracting in analyzing the the law in case.  Also, I believe that knowing the claims recite a combination therapy is superfluous and thereby distracting itself. (At least I found them distracting at first. Maybe that’s just me. Please work with me for now.) The CAFC’s rule of law works for both mono and combo therapies. See below for a discussion regarding combination therapies.

The overall goal is to get from A to B. Doctors already know how to get from A to B. It is prior art. No argument there. Then an inventor discovers that X is the mechanism of action that leads to B.

Doctors did not already know that going from A to B involves X. This is not taught in the prior art.  A→X is a genuine new discovery. No argument there either.

Now you have  A→ X→ B.

Although the discovery of A→ X is indeed new, inventors should not be able to patent a claim to the discovery. Even though doctors did not know it, doctors were inherently doing the process of A→ X→ B by simply prescribing A to treat B.  It makes sense that someone should not be able to patent a claim to  A→ X→ B, or even simply A→X, then suddenly prevent doctors from prescribing A→ B, which they have been doing all along.

New methods and mechanisms of action may still be patented

In re Couvaras, however, does not mean that all mechanisms and new uses are not patentable. New uses for old compounds May still be patentable. For example, an inventor may discover that A also renders the benefit of C, and that A affects B by going through mechanism Y.

In this example, the inventor may be able to patent a claim to A→C.

If an inventor simultaneously discovers that A→C goes through the mechanism “Y” then they may be able to patent a claim covering both A→C, A→Y,  and A→Y→C.  

NOTE: The inventor should file both claims simultaneously so the inventor’s disclosure of A→C does not block the claim to A→Y. If not, then the inventor will have the same problem from In re Couvaras.

In summary, patentability of mechanisms (X/Y) rest on the whether the overall benefit (B/C) is unexpected from the known composition (A).

Secondary Considerations

Of course, secondary considerations provide some leniency. But the secondary considerations surely need to be compelling.

“To establish unexpected results, Couvaras would have needed to show that the co-administration of GABA-s agonist and an ARB provided an unexpected benefit,” such as, e.g., better control of hypertension or less toxicity.

Failure of others: “The purported failure to achieve prostacyclin increase through pursuing an unrelated goal did not establish the non-obviousness of the claimed method.”

No long felt need: The anti-hypertensive agents were admitted to be available already.

“The pending claims of the ’422 application literally recite methods of increasing prostacyclin release in the systemic blood vessels of a human with essential hypertension to improve vasodilation. That increased prostacyclin release is achieved by co-administering two well-known types of antihypertensive agents: a GABA-a agonist and an Angiotensin II Receptor Blocker (“ARB”). In reality, the claims relate to combatting hypertension with known antihypertensive agents and claiming their previously unappreciated mechanism of action.”

Novelty vs. Obviousness: Inherency

Q: Why is inherency in a case about obviousness and not about novelty?

A: Here is where the combo-therapy aspect comes in. A combination of two known compounds that render the same benefit is obvious. Dr. Couvaras argued that the discovery of the compounds’ mechanism of action overcame the obviousness rejection. Essentially the argument tried to convince the examiner that each mono therapy was novel. With two novel monotherapies in hand, reasoning follows that combination of two novel monotherapies would have been non-obvious.


Post Script

On bright side, The USPTO awarded Dr. Couvaras with U.S. Patent No. 9,339,542 in his earlier application. Composition claims to combinations were non-obvious.

Granted Claim 1:  A composition effective to relax Smooth muscles in an individual in an altered state, the composition comprising: a dosage of GABA or GABA-a analogue; and a dosage of at least one of an ACE inhibitor and a ARB combined with the dosage of GABA or GABA-a analogue into a deliverable form.


Gilead Wins Another Sofosbuvir Challenge: U. Minnesota v. Gilead

Regents of the U. of Minnesota v. Gilead Scis., Inc., 2021-2168, — F.4th — (Fed. Cir. Mar. 6, 2023)

The Court of Appeals for the Federal Circuit (CAFC) analyzed whether the written description found in UMN’s priority applications supported the claims in the resulting patent # US 8,815,830. The CAFC said no.

While the ‘830 patent claims covered sofosbuvir, The CAFC affirmed an IPR’s invalidation of U. Minnesota’s claims because they could not properly claim priority to its provisional application. The reasoning was that the provisional with its nebulous multiple dependent claims, that were themselves dependent on further multiple dependent claims, did not adequately describe the subgenus eventually claimed in the non-provisional application.

See Patently-O’s posts for more:

March 7, 2023 — Laundry Lists of Components are Insufficient Written Description for a Particular Combination | Patently-O (patentlyo.com)

March 9, 2023 — Multiple dependent claims, blaze marks, and ipsis verbis support | Patently-O (patentlyo.com)

SOVALDI® (soh-VAHL-dee) (sofosbuvir)



Said Goodbye to Ribbons – Now Say Goodbye to Paper: USPTO Officially Transitions to Issuing Electronic Patent Grants in 2023

Get ready for Electronic Patent Grants!*   

* And be ready to file continuations or divisionals earlier.

Recently in 2018 [okay perhaps ancient history to some] the USPTO stopped attaching actual ribbons to issued patents. Now the USPTO will stop automatically printing paper copies. This is of course good news for trees. This is also good news for applicants who want applications issued more efficiently. However, applicants need to be ready to file any continuing applications earlier than they have been accustomed because the USPTO will issue patents more quickly after providing applicants with a Notice of Issuance. Meanwhile, applicants still need to file continuing applications before issuance.

Electronic Patent Grants – When:

Effective April 18, 2023, the USPTO Officially Transitions from issuing patent grants on paper to Issuing electronic patent grants (Federal Register).

Transition Period – USPTO will still provide free ceremonial copies

  • The USPTO will provide patentees a ceremonial paper copy of the issued patent during the transition period as a courtesy, free of charge.
  • The ceremonial paper copy resembles the paper patent that the USPTO traditionally provided to patent applicants as the issued patent.
  • The ceremonial paper copy will be bound with a cover sheet with both an embossed seal and the signature of the USPTO Director.
  • Length of Transition Period? TBD – Do not know.

$$ After Transition Period

  • The ceremonial paper copy will be available for purchase for a nominal fee after the transition period, in addition to the presentation copy and certified copy.
  • How much is the “nominal fee” for a “ceremonial” copy? TBD –  Do not know. Though a “presentation copy” is presently $25.

BE READY TO FILE CONTINUING APPLICATIONS!

Patent Prosecution Best-Practice Note:  File Continuing applications (CON/DIV) as early as possible. Applicants will not have as much time between receiving an Issue Notification and seeing the patent office issue the granted patent.

Warning from the USPTO:

“The USPTO will issue the patent shortly after the payment of the issue fee. As a result, applicants will have less time, after the payment of the issue fee, to file continuing applications, Quick Path Information Disclosure Statements, or petitions under 37 CFR 1.313(c) to withdraw an application from issue. Therefore, the best practice would be for applicants to file these submissions as early as possible. Preferably, continuing applications should be filed before the payment of the issue fee. See Manual of Patent Examining Procedure (9th ed. Rev. 10.2019) (MPEP) sec. 211.01(b)(I).” (Federal Register/Vol. 88, No. 39/Tuesday, February 28, 2023/Rules and Regulations; Page 12561)

Updated USPTO Form PTOL-85B (Issue Fee Transmittal) includes a reminder to file any continuing application prior to issue-fee payment so as not to jeopardize co-pendency. The newly modified form can be found here. The form no longer allows for advance orders of patent copies, because patents may be printed directly from Patent Center when issued. Advance orders for copies of patents issuing on or after April 18 will not be processed.

More information from other insightful publications:

Ready, Set, Go: Implications of USPTO’s Shift to Electronic Patent Grants (foxrothschild.com)

eGrants and Quick Issuances | Patently-O (patentlyo.com)

USPTO ushers in new era with introduction of electronic patent grants | USPTO

USPTO Transitions to eGrants from Paper Patents | JDSupra

USPTO To Transition To Electronically Granted Patents In April 2023 | Blogs | PharmaPatents | Foley & Lardner LLP

STIVARGA® (regorafenib) Survives Challenge at PTAB: Difference = One Fluorine

February 8, 2017

FUSTIBAL LLC (Petitioner)  v. BAYER HEALTHCARE LLC, (Patent Owner)

Case IPR2016-01490
Patent 8,637,553 B2

Link to PTAB Decision Denying Institution

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Regorafenib (API of STIVARGA®)

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Prior art compound = Sorafenib (Nexavar®)

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Summary

The Patent Trial and Appeal Board (PTAB) declined Fustibal’s petition to Institute an Inter Partes Review (IPR) trial of Bayer’s U.S. Patent 8,637,553 B2 claiming regorafenib (API of STIVARGA®).

The PTAB concluded that Fustibal did not establish a reasonable likelihood that Bayer’s claims are rendered as anticipated or obvious by the prior art.

At first glance, Fustibal’s petition looks strong because Bayer’s regorafenib merely differs from the prior art’s sorafenib by one fluorine on the center aromatic ring.  [Sorafenib does not have the extra fluorine] Fustibal argues that Bayer merely added fluorine as an obvious modification.

Fustibal challenged both regorafenib’s novelty and non-obviousness over the closest prior art publication WO 00/42012 to Riedl.

PTAB’s Deference to the Patent Examiner

The PTAB declined to second-guess the Patent Examiner because the examiner repeatedly reconsidered the prior art patent (Riedl) during prosecution and expressly allowed the claims over the prior art.

The patent examiner provided the following Reasons for Allowance:

“After a thorough search, the closest prior art, WO 00/42012 to Riedl, et al. was found to teach similar phenyl-urea derivatives as kinase inhibitors.  However, the WO document fails to teach or render obvious the instant claimed compounds according to Formula (I), and does not fairly suggest their salts or pharmaceutical compositions.”

The PTAB further declined to institute an IPR trial on the merits.

Anticipation / Novelty – §102

Even though the prior art recited a genus that would encompass regorafenib, the PTAB determined that the prior art genus was too vast to anticipate regorafenib.

  • Where “the number of compounds actually disclosed by [the asserted prior art] numbers in the millions (including all proposed alternative substituents),” the prior art genus cannot anticipate a later species claim.  (Eli Lilly & Co. v. Zenith Goldline Pharm., Inc., 471 F.3d 1369, 1376 (Fed. Cir. 2006))
  • Where a reference does not “clearly and unequivocally disclose the claimed compound,” to be anticipatory reference under 35 U.S.C. § 102, it must, nevertheless, “direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”  In re Arkley, 455 F.2d 586, 587 (CCPA 1972).  For the reasons set forth at pages 9–16 of the Preliminarily Response, we agree with Patent Owner that the genus relied on by Petitioner, having “‘eight individual chemical compounds possible when substituting a halogen”—F, Cl, Br, or I—at position 2/2’ or 3/3’ of the central ring of sorafenib, does not exist in Riedl, and only results from Petitioner’s improper picking and choosing disparate aspects of the disclosure.  See Prelim. Resp. 13–15 (quoting Pet. 16).

Obviousness – § 103

As expected, the PTAB applied the two-prong inquiry [“lead compound analysis”] from Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1291–93 (Fed. Cir. 2012) for determining whether a claimed compound would have been obvious over prior art compounds.  First, the PTAB determined whether a chemist of ordinary skill would have selected the asserted prior art compounds as lead compounds, or starting points, for further development efforts.  Second, the PTAB analyzed whether there was a reason to modify a lead compound to make the claimed compound with a reasonable expectation of success.

The PTAB noted that Fustibal’s petition did not include a “mandatory” lead compound analysis.  Fustibal merely assumed – without explanation – that a person of ordinary skill in the art would select sorafenib as a lead compound for modification.

The PTAB did not discern a reason to select from Sorafenib from the prior art Riedl reference because the reference does not highlight any of the vast number of disclosed compounds is having particularly beneficial properties or present any enzymatic or biological data.

No reason to modify Sorafenib by adding one fluorine to arrive at Regorafenib

Fustibal’s petition did not provide the necessary reasons why a chemist would modify the prior art in that particular manner. Even though the prior art discloses potential benefits of adding one or more fluorine atoms, the prior art merely indicates that the prior art compound can be halogenated.

The PTAB did not read the prior art to suggest that any fluorine substitution will result in improved pharmacological properties.  The PTAB agreed with the patent owner that if improvements by adding fluorine were always true, then “all pharmaceutical compounds would be fluorinated, which is plainly not the case.”  Meanwhile, the compound already had a trifluoromethyl group on it.  The petitioner could not explain why a chemist would add multiple additional fluorine atoms.

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Notes:

On November 22, 2013, the U. S. Food and Drug Administration approved sorafenib (NEXAVAR tablets, Bayer Healthcare Pharmaceuticals Inc.) for the treatment of locally recurrent or metastatic, progressive, differentiated thyroid carcinoma (DTC) refractory to radioactive iodine treatment. The FDA previously approved Sorafenib for treatment of renal cell carcinoma (2005) and hepatocellular carcinoma (2007).

http://www.fda.gov/Drugs/InformationOnDrugs/ApprovedDrugs/ucm376547.htm

The U.S. Food and Drug Administration approved Stivarga® (regorafenib) on September 27, 2012 to treat patients with colorectal cancer that has progressed after treatment and spread to other parts of the body (metastatic). http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm321271.htm

Analogues of Poison Dart Frog Toxins 

C&EN’s article on Dr. Du Bois’s synthesis of (-)-Batrachotoxin caught my Eye. I once took care of a few poison dart frogs for a friend while he was travelling. Feeding them fruit flies was actually fun. Naturally I checked to see what patents have issued.

Check out: “Batrachotoxin analogues, compositions, uses, and preparation thereof”
US 9090627 B2