In support of its argument that appreciation of the stabilizing effect of crospovidone was not required, AstraZeneca relies on a series of cases in which the Federal Circuit has held that "`a reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time.'" ( See AstraZeneca Reply 2-3 (quoting Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006).) Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985), cited by AstraZeneca, has been described as the "classic case" on this point.

Maj. Op. 1294. I think that the different results as between the claims of the '463 patent and claim 4 of the '149 patent cannot be reconciled. While a new and nonobvious method of using an existing (or obvious) composition may itself be patentable, see Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed.Cir.2005), a newly-discovered result or property of an existing (or obvious) method of use is not patentable. See Abbott Labs. v. Baxter Pharm. Prods., 471 F.3d 1363, 1368–69 (Fed.Cir.2006); Brassica Prot. Prods. LLC v. Sunrise Farms (In re Cruciferous Sprout Litig.), 301 F.3d 1343, 1350–51 & n. 4 (Fed.Cir.2002); Bristol–Myers Squibb Co. v. Ben Venue Labs., 246 F.3d 1368, 1376 (Fed.Cir.2001). In this case, the method of claim 4 consists of a single step: applying a fixed combination of 0.2% brimonidine and 0.5% timolol twice a day.

Maj. Op. 13. I think that the different results as between the claims of the '463 patent and claim 4 of the '149 patent cannot be reconciled. While a new and nonobvious method of using an existing (or obvious) composition may itself be patentable, see Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005), a newly-discovered result or property of an existing (or obvious) method of use is not patentable. See Abbott Labs. v. Baxter Pharm. Prods., 471 F.3d 1363, 1368-69 (Fed. Cir. 2006); Brassica Prot. Prods. LLC v.Sunrise Farms (In re Cruciferous Sprout Litig.), 301 F.3d 1343, 1350-51 & n.4 (Fed. Cir. 2002); Bristol-Myers Squibb Co. v. Ben Venue Labs., 246 F.3d 1368, 1376 (Fed. Cir. 2001). In this case, the method of claim 4 consists of a single step: applying a fixed combination of 0.2% brimonidine and 0.5% timolol twice a day.

Further, the use of "around" in this construction respects the patentee's choice not to explicitly limit the tunnel diameter. See Skedco, 685 F. App'x at 959 ("Absent a clear disavowal or lexicography by a patentee, however, he or she is free to draft a claim broadly and expect the full claim scope."); Abbott Labs. v. Baxter Pharm. Prod., Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006) (declining to construe a "phrase with numerical exactitude" when such precision was unnecessary to resolve the parties' dispute). — "hole . . . configured to extend substantially horizontally or at an upward angle"

A party seeking to establish that a patent claim is invalid must overcome the presumption that patents are valid by clear and convincing evidence. See id. at 1376; Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1367 (Fed Cir. 2006) (patent claims are presumed valid under 35 U.S.C. § 282). One way to show that a patent claim is invalid is by showing that the claim in question was anticipated by prior art. See, e.g., Zenith Elec. Corp. v.PDI Commc'n Sys., Inc., 522 F.3d 1348, 1356 (Fed. Cir. 2008).

The resolution of some line-drawing problems — especially easy ones like this one — is properly left to the trier of fact. See PPG Indus, v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir.1998) ("[A]fter the court has defined the claim with whatever specificity and precision is warranted by the language of the claim and the evidence bearing on the proper construction, the task of determining whether the construed claim reads on the accused product is for the finder of fact."); Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1554 (Fed. Cir.1996) (whether claim limitation requiring diameter of "about 0.040 inch" embodied held a matter of "technologic fact"); see also Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1368 (Fed. Cir.2006) (where result is the same under any reasonable construction, "we need not construe [the disputed] phrase with numerical exactitude."). Here, the accused product has a rounded-off six-degree angle in its shaft.

The alleged infringer bears "the burden of proving invalidity by clear and convincing evidence." U.S. SurgicalCorp. v. Ethicon, Inc., 103 F.3d 1554, 1564 (Fed. Cir.1997); see also Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1367 (Fed. Cir.2006); TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir.2004). On this very sketchy record, no reasonable jury could find by clear and convincing evidence that the described surgeries using the claimed invention occurred prior to the critical date.

(ECF No. 1-1 at 3:55-4:2.) Moreover, Oticon's reliance on Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006) for the proposition that a court "need not construe" a disputed phrase "with numerical exactitude" is misplaced. In Abbott, the court determined that it need not attach a specific quantitative capability to the subject patent's claim of sevoflurane water preventing Lewis acid degradation as such measurement was "irrelevant to the question" of whether the alleged infringing patent had disclosed a new claim over the plaintiff's patent.

Id. at 1377-78; see also, e.g., In re Omeprazole Patent Litigation, 483 F.3d 1364, 1373 (Fed. Cir. 2007) ("[I]nherency is not necessarily coterminous with knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art" (quoting In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002))); Abbott Labs v. Baxter Pharm. Prods., 471 F.3d 1363, 1367 (Fed. Cir. 2006) ("Our cases have consistently held that a reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time."); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343 (Fed. Cir. 2005) ("[I]nherent anticipation does not require a person of ordinary skill in the art to recognize the inherent disclosure in the prior art at the time the prior art is created."); Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004) ("Simply put, the fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention."). Alvogen argues that genus-species case law does not apply to inherency because of the case law holding that inherent anticipation does not require recognition by a person of skill prior to the priority date.

Notably, a "sound claim construction need not always purge every shred of ambiguity." Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007); see also Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006) ("[W]e need not construe [the disputed] phrase with numerical exactitude."). "The resolution of some line-drawing problems . . . is properly left to the trier of fact."