Federal Circuit’s Broad Claim Construction Defeats Patent Owner’s Infringement Claim

The patent owner sued the accused infringers, asserting that the accused infringers’ generic version of the patent owner’s product infringed all claims of the patent. The accused infringers filed three, separate inter partes review (IPR) petitions. In all three IPRs, the Patent Trial and Appeal Board (PTAB) issued claim construction orders adverse to the patent owner and found the asserted claims obvious. The district court found all asserted claims invalid as obvious in light of its claim construction and the same combination of prior art relied on by the PTAB. The Federal Circuit affirmed.

The asserted claims concerned a method for the “treatment” of prostate cancer by administering “a therapeutically effective amount” of abiraterone and prednisone. The patent owner argued that the PTAB improperly construed the term “treatment” by not requiring prednisone to have an anti-cancer effect. The Federal Circuit disagreed with the patent owner, concluding that the “patent’s claims, specifications, and prosecution history teach that ‘treatment’ includes both anti-cancer effects and palliation or reduction in side effects of a different anti-cancer drug.” The Federal Circuit noted that the specification states that a “therapeutic agent” may be either “an anti-cancer agent or a steroid.” It further states that prednisone is both a steroid and an anti-cancer agent, which supports the PTAB’s construction that prednisone may “treat” cancer by either having anti-cancer effects or by producing “familiar steroid effects of palliation and the reduction of side effects cause by the co-administration of abiraterone.” Furthermore, the Federal Circuit held that substantial evidence supported the PTAB’s obviousness determination that the prior art provides “a reasonable expectation of success” that prednisone could be therapeutically effective in the treatment of prostate cancer.