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The patent at issue related to a method for treating certain female patients having a certain type of irritable bowel syndrome.  The court affirmed the district court’s holding that the claims were invalid as being obvious.  The prior art disclosed the genus of methods for treating irritable bowel syndrome using Lotronex.  The claims at issue were directed to the species of method disclosed in the prior art. The court agreed that it is possible for a narrow species to be non-obvious and patent eligible despite a patent on its genus, especially in the context of personalized medicine where a particular treatment may be effective with respect to one subset of patients and ineffective (and possibly harmful) to another subset of patients.  Here, however, the species claimed was obvious in view of the genus.  The court demonstrated how each claim limitation was disclosed in the prior art and, because there were only a few different variables, it would have been obvious to combine the teachings of the prior art.  The court further affirmed the district court’s finding that the secondary considerations of non-obviousness did not support such a conclusion.

Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc., Case Nos. 2014-1634, -1635 (November 10, 2015); Opinion by: Dyk, joined by Taranto and Hughes; Appealed From: United States District Court for the District of New Jersey, Hochberg, J. Read the full opinion here.

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