Horizon Pharma Inc. Vs Dr. Reddy's Laboratories Inc: Invalidate Patents through Indefiniteness
The latest case of Horizon Pharma vs. Dr. Reddy touches upon an important aspect of drafting the specification and indefiniteness in the US Patent Law. 35 U.S.C. § 112(b), which says that the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. An important part arises which specifies the reasonable certainty in the claim language which is expected from the patent application thereby, not making it under the zone of uncertainty.
Point of Dispute
Horizon Pharma’s U.S. Patent Nos. 9,220,698 and 9,393,208 were primarily in question. The patent primarily dealt with combination therapy of a non-steroidal anti-inflammatory (NSAID) medication and a proton-pump inhibitor (PPI) that minimized the gastrointestinal complications of NSAID administration. The issue was raised concerning claim 1 of 698 patents. The claim substantiates itself with the word ‘Target’ that was primarily used to explain the efficacy of the drug. The defendant contends this particular patent being under indefiniteness thereby, creating a zone of uncertainty.
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The district court affirmed the defendant's contention that these patents were invalid for indefiniteness. And the basis of the decision was the term ‘target’. The patentee alternative construction to replace the word “Target” with “Produce” was also rejected. Even though the goal was visible but the ‘act of targeting the goal was not’, since the pills cannot be said to set the goals.
The decision was appealed to the Federal Circuit who reiterated the District Court's reasoning of taking the meaning of the word target not more than its ordinary meaning i.e. set as a goal. The court affirmed- “the claim term 'target' is a commonly understood word, and nothing Appellants point to in the specification or the prosecution history suggests that it should be given anything other than its ordinary meaning”. The court also reiterated the decision of Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., (572 U.S. 898, 910 (2014)), and construed that "one circumstance in which claims are indefinite is where the claims, as properly construed, are nonsensical”. The word target in claim 1 renders the patent as indefiniteness.
This case becomes a classic example of how a specification should be drafted to not leave any scope of indefiniteness.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at firstname.lastname@example.org.