Upsher-Smith Laboratories, Inc. v. Pamlab, L.L.C., 04-1405.

• Decision Date: 17 June 2005
• Docket Number: No. 04-1405.,04-1405.
• Citation: 412 F.3d 1319
• Parties: UPSHER-SMITH LABORATORIES, INC., Plaintiff-Appellant, v. PAMLAB, L.L.C. (formerly Pan American Laboratories, Inc.) and Pan American Laboratories, L.L.C., Defendants-Appellees, and Metabolite Laboratories, Inc., Defendant.
• Court: U.S. Court of Appeals — Federal Circuit

412 F.3d 1319

UPSHER-SMITH LABORATORIES, INC., Plaintiff-Appellant, v. PAMLAB, L.L.C. (formerly Pan American Laboratories, Inc.) and Pan American Laboratories, L.L.C., Defendants-Appellees, and Metabolite Laboratories, Inc., Defendant.

No. 04-1405.

United States Court of Appeals, Federal Circuit.

June 17, 2005.

Jacob M. Holdreith, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, Minnesota, argued for plaintiff-appellant. With him on the brief were Ronald J. Schutz, Misti Nelc, Kimberly G. Miller, and Jonathan D. Goins.

Glenn K. Beaton, Gibson, Dunn & Crutcher LLP, of Denver, Colorado, argued for defendants-appellees. With him on the brief were J. Gregory Whitehair and Amanda J. Tessar. Of counsel on the brief was Mark A. Perry, of Washington, DC.

Before MICHEL, Chief Judge, RADER, and SCHALL, Circuit Judges.

RADER, Circuit Judge.

Upsher-Smith Laboratories, Inc. (Upsher-Smith) is the assignee of U.S. Patent Nos. 5,932,624 (issued Aug. 3, 1999) and 6,605,646 (issued Aug. 12, 2003) ('624 and '646 patents, respectively) for vitamin supplement compositions. Upsher-Smith asserted claims 1, 2, 5, and 8-10 of the '624 patent and claims 1-7 of the '646 patent against Pan American Laboratories, L.L.C. and Pamlab, L.L.C. (collectively Pamlab).¹ In two orders, the district court granted summary judgment to Pamlab, finding the asserted claims of the '624 and '646 patents invalid for anticipation and obviousness. Upsher-Smith Labs., Inc. v. Pan Am. Labs. Inc., No. 01-352, 2003 WL 22999551 (D.Minn. Dec. 19, 2003) ('624 Order) (invalidity of the asserted claims of the '624 patent); Upsher-Smith Labs., Inc. v. Pan Am. Labs. Inc., No. 01-352, 2004 WL 902176 (D.Minn. Apr. 26, 2004) ('646 Order) (invalidity of the asserted claims of the '646 patent). Because the district court properly found that a prior art composition that "optionally includes" an ingredient anticipates a claim for the same composition that expressly excludes that ingredient, this court affirms.

I

The '624 patent discloses vitamin supplement compositions to lower serum homocysteine levels and protect against related blood vessel disorders. '624 patent, Abstract. The '646 patent discloses vitamin supplement compositions to prevent brain and nervous system damage, and pernicious anemia. '646 patent, Abstract. Specifically, the '624 and '646 patents claim vitamin supplement compositions consisting of vitamin B₁₂, folic acid (folate), and in some instances vitamin B₆. '624 patent, col. 2, ll. 15-19; '646 patent, col. 2, II. 25-29. Claim 1 of the '624 patent, for instance, states:

A vitamin or supplement composition adapted for administration to a human, the active components thereof consisting essentially of a member selected from the group consisting of:

(a) folic acid, and vitamin B₁₂;

(b) folic acid, vitamin B₁₂, and vitamin B₆;

(c) folic acid, vitamin B₁₂, and a non-antioxidant vitamin; and

(d) folic acid, vitamin B₁₂, and non-antioxidant vitamins, said composition being essentially free of anti[]oxidants.

'624 patent, col. 4, II. 21-32. Importantly, the asserted claims of the '624 and '646 patents contain the requirement that the compositions be "essentially free of antioxidants."

The prior art contains many vitamin supplement compositions comprising vitamin B₁₂, folate, and vitamin B₆. However, the prior art that teaches compositions consisting of vitamin B₁₂, folate, and vitamin B₆ also teaches adding other vitamins and antioxidants to provide additional health benefits. Dr. Victor Herbert, the named inventor of the '624 and '646 patents, discovered that including antioxidants in such compositions destroys some of the vitamin B₁₂ and folate. Dr. Herbert obtained the '624 and '646 patents based on that discovery. Dr. Herbert distinguished the prior art by claiming compositions that expressly exclude antioxidants. Indeed, Upsher-Smith admits that the only difference between the asserted claims and the prior art is the claims' negative limitation excluding antioxidants.

In addition to teaching vitamin supplement compositions comprising vitamin B₁₂, folate and vitamin B₆, the prior art recognized that several substances known to be antioxidants were also known to destroy vitamin B₁₂ and folate. Specifically, an article published more than forty years before the filing dates of the '624 and '646 patents recognized that vitamins C and E, both of which were known antioxidants, are "incompatible" with vitamin B₁₂. Thomas J. Macek & Beate A. Feller, Crystalline Vitamin B₁₂ in Pharmaceutical Preparations, 41 Journal of the Am. Pharm. Assoc., No. 6, at 285 (1952). Dr. Hebert also published an article more than twenty years before the filing the date of the '624 and '646 patents teaching that vitamin C destroys vitamin B₁₂. Victor Herbert, MD, JD, & Elizabeth Jacob, MD, Destruction of Vitamin B₁₂ by Asorbic Acid, 230 Journal of the Am. Med. Assoc., No. 2, at 241 (Oct. 14, 1974). Thus, the prior art teaches that certain substances known as antioxidants destroy vitamin B₁₂. The prior art does not teach, however, that the antioxidizing properties of those substances are responsible for this destruction. As described above, Dr. Herbert discovered that relationship.

Against this background, the district court decided Pamlab's motions for summary judgment of invalidity for anticipation and obviousness. The district court found the asserted claims of the '624 and '646 patents anticipated by European Patent Application No. 933114762.3 (filed Sept. 14, 1993) (European Application).² '624 Order at 11-12; '646 Order at 4-5. The European Application discloses the same compositions claimed in the '624 and '646 patents with the difference that the European Application "optionally includes" antioxidants. The district court found that because the European Application teaches compositions both with and without the antioxidants, it anticipates the asserted claims of the '624 and '646 patents. '624 Order at 11; '646 Order at 4-5. Upsher-Smith appeals. This court has jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).

II

Anticipation is a question of fact. Elan Pharm., Inc. v. Mayo Found. for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed.Cir.2003). However, this court reviews grants of summary judgment without deference. Knoll Pharm. Co. v. Teva Pharms. USA, Inc., 367 F.3d 1381, 1384 (Fed.Cir.2004). "Summary judgment is therefore appropriate when there is no genuine issue of material fact or when, drawing all factual inferences in favor of the nonmoving party, no `reasonable jury could return a verdict for the nonmoving party.'" Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed.Cir.2003) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)).

Upsher-Smith concedes that the European Application contains every element of the asserted claims of the '624 and '646 patents except the limitation "essentially free of antioxidants." Nevertheless, Upsher-Smith argues that because the European Application optionally includes antioxidants the district court erred in finding that it anticipates a limitation that expressly excludes antioxidants.

First, Upsher-Smith argues that the district court erred by placing the burden on Upsher-Smith to prove that the negative limitation was not found in the prior art rather than on Pamlab to prove the presence of the negative limitation in the prior art. The district court did not so err. A century-old axiom of patent law holds that a product "which would literally infringe if later in time anticipates if earlier." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed.Cir.2003) (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed.Cir.2001)); accord Peters v. Active Mfg. Co., 129 U.S. 530, 537, 9 S.Ct. 389, 32 L.Ed. 738 (1889) ("That which infringes, if later, would anticipate, if earlier."). The European Application's "optional inclusion" of antioxidants teaches vitamin supplement compositions that both do and do not contain antioxidants. Thus, because compositions made according to the European Application that do not...