Errors, Incorporation by Reference, and the Abhorrent Doctrine of Disappearing Anticipation

Errors, Incorporation by Reference, and the Abhorrent Doctrine of Disappearing Anticipation

Mark R. Buscher

The standard for anticipation of a patent claim is seemingly straight forward – a single prior art reference recites each and every element and limitation of the claim. “There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Yet some interesting wrinkles can occur.

Suppose a reference fully anticipates a patent claim, but upon learning additional facts the reader would understand the reference differently and the reference would no longer anticipate the claim. Is such disappearing anticipation sufficient to invalidate the claim? Is anticipation negated by subsequent knowledge, even though at some point in time the worker of ordinary skill in the art was in possession of the claimed invention?

One court decision seems to say “no”: disappearing anticipation is not anticipation and the reference, now properly understood, does not invalidate the patent. The court only “seems” to so hold as the issue was not framed in this manner, nor did the court directly grapple with it. But, given the facts, the court’s holding tacitly approves that anticipation can be nullified by subsequent knowledge of additional facts. The decision, in Eli Lilly and Co. v. Zenith Goldline Pharm., 364 F.Supp.2d 820 (S.D. Ind. 2005), was fairly important as it upheld Lilly’s patent on olanzapine, the active ingredient in the blockbuster drug ZYPREXA® (over $2 billion dollars a year in U.S. sales at the time). I think, however, the court reached the wrong result in permitting anticipation to disappear, both under existing law and public policy. This paper looks at the interesting facts in Eli Lilly and suggests that a different analysis would have been more appropriate and should have led to a different result.

99 J. Pat. & Trademark Off. Soc’y 67(2017)

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