Federal Circuit - The FindLaw Federal Circuit Court of Appeals Opinion Summaries Blog

Patent Claims Over Cialis Revived by Federal Circuit

A federal appeals court has vacated a patent board's finding that a patent for treating penile fibrosis was invalid, reviving a dispute over the erectile dysfunction drug "Cialis."

Remanding the case to the Patent Trial and Appeal Board, the Federal Circuit Court of Appeals said the board must reconsider the obviousness of the method for "arresting or regressing" penile fibrosis. In Los Angeles Biomedical Research Institute v. Eli Lilly and Company, the research firm alleged the pharmaceutical company induced patent infringement through repeated treatments of Cialis.

The question revolves around the long-term use of the erectile dysfunction drug and its positive effects on penile fibrosis.

Obvious Enough for Cialis?

Los Angeles Biomedical filed its complaint in U.S. District Court in 2013, alleging that Eli Lilly's marketing of Cialis infringed its patent. Eli Lilly responded with multiple petitions to the patent board challenging the patent.

The board found that the patent claims were invalid based on obvious prior iterations. In a split decision, the federal appeals court disagreed.

"Because the Board's obviousness determination was predicated on an erroneous claim construction of two of the limitations ... and because the Board did not make factual findings as to whether there was an apparent reason to combine the prior art references to treat penile fibrosis and whether a person of skill in the art would have had a reasonable expectation of success from such a combination, we remand this case to the Board," Judge Bryson wrote for the divided panel said.

In dissent, Judge Newman said the court could have resolved the issue without remanding.

Related Resources: