Dependent claims must be examined separately from the independent claims from which they depend.
Background / Facts: The patents here claim methods for treating medical conditions, such as inflammatory disorders, characterized by increased endogenous nitric oxide production. Specifically, the patents claim the use of tetracyclines – a class of antibiotics that includes doxycycline – to inhibit nitric oxide production or nitric oxide synthase expression or activity. The dependent claims recite different dosing ranges.
Issue(s): Whether the district court erred by making no findings on whether any of the prior art contained the additional limitations found in the asserted dependent claims.
Holding(s): Yes. “What suffices to anticipate one claim may not suffice for another claim containing different elements. In particular, when a dependent claim adds an element to an independent claim, and the challenger sufficiently raises the point, an anticipation analysis must examine the additional element – which, by definition, it will not have been necessary to analyze in assessing anticipation of the independent claim not containing the added element.”