ALLERGAN SALES, LLC v. SANDOZ, INC., decided August 29, 2019, Claim Interpretation

U.S. Patent Nos. 9,770,453; 9,907,801; and 9,907,802 are directed to topical treatment for glaucoma (pages 2-3). A representative claim recites “wherein” clauses regarding efficacy and representative safety (pages 4 and 7). The wherein clauses are more than intended results (pages 7-8). The wherein clauses reflect results from example II taught in the specification (pages 7-8). The specification teaches that the claimed invention is a formulation allowing for increased efficacy and safety (page 8). The benefits are described throughout and compared to the prior art (page 9). This demonstrates increased efficacy and safety to be material to patentability (page 9). The efficacy and safety were relied upon in prosecution to overcome rejections (pages 9-10). The Examiner specifically relied on the wherein clauses in explaining allowance (page 10). The wherein clauses are material to patentability (pages 10-11).

Hindsight: Benefits may be good for dealing with patentable subject matter and obviousness concerns, so should be included in the application. The benefits may be downplayed for patentability, such as indicating that there may be different, fewer, or additional benefits. It may be best to avoid over-emphasizing the benefits. It may be best to avoid adding benefits into a claim. Otherwise, there is a risk that the benefit is a material part of the claim.