February 5, 2023

Volume XIII, Number 36

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February 03, 2023

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February 02, 2023

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A Prior Art Reference that Merely Suggests the Claimed Subject Matter Does Not Anticipate the Claims

Eli Lilly v. Los Angeles Biomedical (2016-1547), February 28, 2017.  Before Judges Newman, Bryson, and Moore.


  • In order to anticipate claims directed toward a daily treatment regime, a reference must do more than merely suggest the claimed subject matter.

Procedural Posture:

Los Angeles Biomedical filed a patent infringement suit against Eli Lilly and Company alleging infringement of U.S. Patent No. 8,133,903 (“the ‘903 Patent”).  Eli Lilly filed multiple inter partes review petitions challenging the validity of the ‘903 Patent.  This is an appeal from the PTAB’s decision finding that a single prior art reference did not anticipate the claims of the ‘903 Patent.  The CAFC affirmed the PTAB’s decision.


  • Anticipation: The PTAB found that the prior art reference Whitaker did not disclose the limitation recited in independent claim 1 of administering a class of drugs “at a dosage up to 1.5 mg/kg/day for not less than 45 days.” Whitaker discussed a set of studies in which subjects were treated with a PDE5 inhibitor “greater than 70% of the time” over the course of either 8 or 12 weeks, but the CAFC found that taking a drug “more than 70% of the time” does not disclose daily dosing.  The CAFC found that Whitaker also disclosed “chronic administration,” but this was in reference to daily administration for at least three days, and longer if the erectile dysfunction persists.  The CAFC found that this description does not disclose treatment for 45 days, “particularly in light of the fact that the only daily dosing done in Whitaker lasted for at most three weeks.”  Eli Lilly & Co. v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 2016-1547, 2017 WL 765829, at *2 (Fed. Cir. Feb. 28, 2017).  The CAFC affirmed the PTAB’s decision, and held that substantial evidence supported the PTAB’s finding that Whitaker did not anticipate the claims of the ‘903 Patent.

Copyright © 2023, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 74

About this Author

Sheila Mortazavi, Andrews Kurth Law Firm, Intellectual Property and Litigation Attorney

Sheila’s practice covers all facets of intellectual property litigation and counseling, with a particular emphasis on patent infringement litigation across a wide range of technologies.

Sheila has handled all phases of litigation before federal and state courts, the International Trade Commission and arbitration panels, including pre-trial investigation, fact and expert discovery, motion practice, trial and appellate practice. She advises clients on litigation strategy in complex patent cases, and has represented both plaintiffs and defendants...

Gregory Miller, Andrews Kurth, IP, Intellectual Property, patent

Gregory is an Associate in the Intellectual Property section of Andrews Kurth. He concentrates his practice on the preparation and prosecution of patents, patent appeals, patent opinions, patent litigation, intellectual property licensing and acquisitions, transactions, agreements and due diligence. He works with companies in all stages of growth, and has extensive experience in a variety of matters, from the development of initial patent strategies for start-ups, to the maintenance of cost-effective quality in the management of high volume filings for Fortune 500...

James Wilson, Andrews Kurth Law Firm, Intellectual Property Attorney

James is an Associate in the Intellectual Property section of the firm’s Houston office. Intellectual property issues are critical to the success of any business, regardless of its size. Andrews Kurth helps clients in virtually all industries obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners, engineers and scientists.