In a recent decision on remand from the Federal Circuit, District of Delaware Judge Farnan considered whether, as part of an anticipation inquiry, an earlier patent enabled one skilled in the underlying art to practice the procedure claimed in the patent in suit. Answering no, the Court added new context to the continuing dialogue in the courts about settling the meaning of the phrase “ordinary skill in the art.”
The prior art patent in this drug case embraced “hundreds to thousands” of compounds that could be used to treat a variety of medical conditions. The patent in suit, by contrast, claimed a specific compound – riluzole – for the treatment of one condition – ALS. Although the prior art mentioned riluzole, it did so only for the purposes of synthesizing other compounds or to exclude it altogether. The Court therefore concluded that, amidst the disclosure of so many other compounds and conditions, the prior art patent failed to put one skilled in the treatment of ALS “in possession” of the claimed invention in the patent in suit. The Court also held that, as a matter of law, the experimentation necessary to uncover the riluzole-ALS link would be too great. Accordingly, the prior art patent could not be enabling for anticipation purposes.
Many topics in patent law require courts and litigants to decipher the meaning of “ordinary skill.” If anything, the term has assumed added significance since the Supreme Court’s obviousness decision in KSR. A bright line to take from the present case: one of ordinary skill would not think to practice a particular invention without some transparent and undisguised prompting from the prior art in question. Only one of extraordinary skill in the art would do that.