“A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claims invention either expressly or inherently. [citing Schering Corp. v Geneva] ‘As long as the reference discloses all of the claim limitations and enables the ‘subject matter that falls within the scope of the claims at issue,’ the reference anticipates.’”
The next paragraph may be helpful for practitioners who encounter an Examiner who bases an anticipation rejection on his opinion that the POSA could “immediately envision” a missing claim element. The court stated that “[t]he parties’ stipulation concerned the enablement of McDaniel. What a POSA ‘envisions’ on the other hand is undoubtedly a question of disclosure, not enablement.”
The opinion also notes that Teva also asserted that the Galderma claims were invalid as anticipated or obvious over Manetta alone, or Manetta taken with McDaniel. It seems that only the recited efficacy limitations were missing in Manetta, which contains only 4 picture claims to methods of treating acne with 1% and 1.4% ivermectin. On remand, I think we can assume that Teva would rely on Manetta as the anticipatory reference. Would Teva even need to rely on McDaniel [unless Manetta did not disclosure the use of Soolantra to treat these particular acne patholgies]? Why wouldn’t Manetta inherently anticipate the Galderma claims? I will leave it to those more invested in the ultimate outcome of this litigation to inform us about that.