November 30, 2015
"To be sure, it is well-settled that a narrow species can be non-obvious and patent eligible despite a patent on its genus. An earlier disclosure of a genus does not necessarily prevent patenting a species member of the genus. But that is not the situation here." ~ CAFC in Prometheus Labs v. Roxane Labs (2014-1634)
Prometheus v. Roxane illustrates the turpitude of the US patent system. With 5,360,800, Prometheus patented a poison for treating irritable bowel syndrome. It its first run, the drug (Lotronex) was taken off the market after killing numerous takers. After adding restrictions for its usage, the drug was relaunched. "The number of severe incidents associated with Lotronex dropped, but the rate of adverse events did not change." Prometheus was then issued method patent 6,284,770, taking account in the claims the restrictions for medical application.
Prometheus sued Roxane for infringement. The courts found '770 obvious for double-patenting; "at best, the claims at issue are a combination of known elements, combined in a known way, to produce expected results."