{"id":1374,"date":"2017-01-27T14:11:07","date_gmt":"2017-01-27T19:11:07","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1374"},"modified":"2017-01-27T14:11:35","modified_gmt":"2017-01-27T19:11:35","slug":"communication-of-an-idea-that-makes-the-claimed-invention-obvious-is-not-enough-to-show-derivation","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1374","title":{"rendered":"Communication of an Idea that Makes the Claimed Invention Obvious, Is Not Enough to Show Derivation"},"content":{"rendered":"<p>In\u00a0<em>Cumberland Pharmaceuticals, Inc.v. Mylan Institutioal LLC<\/em>, [2016-1155, 2016-1259] (January 26, 2017) the Federal Circuit affirmed the district court holding that\u00a0U.S. Patent\u00a0No. 8,399,445, which describes and claims acetylcysteine\u00a0compositions substantially free of chelating agents, was not derived from the FDA.<\/p>\n<p>Mylan argued that the claimed invention was obvious from the FDA&#8217;s action on Cumberland&#8217;s petition to market the predecessor composition that contained a chelating agent. \u00a0The FDA asked Cumberland for data supporting the function of the chelating agent, which Mylan argued was proof that the FDA conceived of the idea of\u00a0acetylcysteine free of chelating agents.<\/p>\n<p>The district court found that\u00a0Mylan proved neither (1) that anyone at the\u00a0FDA conceived of the claimed invention before the \u00a0patent named\u00a0inventor nor (2) that there was a reasonable\u00a0expectation that the claimed formulations, without any\u00a0chelating agents, would succeed. \u00a0The Federal Circuit agreed, noting &#8220;[a]\u00a0request for justification\u00a0of the inclusion of EDTA, supported by data, is not the\u00a0same as a suggestion to remove it, let alone to remove it\u00a0and not replace it with another chelating agent.&#8221; The Federal Circuit also rejected the argument that\u00a0the FDA&#8217;s request for data to support the\u00a0inclusion of EDTA required Cumberland to undertake<br \/>\nresearch that would have inevitably led it to the invention.\u00a0Noting that derivation is not proved by showing conception and\u00a0communication of an idea different from the claimed\u00a0invention even where that idea would make the claimed idea obvious.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>In\u00a0Cumberland Pharmaceuticals, Inc.v. Mylan Institutioal LLC, [2016-1155, 2016-1259] (January 26, 2017) the Federal Circuit affirmed the district court holding that\u00a0U.S. Patent\u00a0No. 8,399,445, which describes and claims acetylcysteine\u00a0compositions substantially free of chelating agents, was not derived from the FDA. Mylan argued &hellip; <a href=\"https:\/\/patents.harnessip.com\/?p=1374\">Continue reading <span class=\"meta-nav\">&rarr;<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1374","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1374","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1374"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1374\/revisions"}],"predecessor-version":[{"id":1375,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1374\/revisions\/1375"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1374"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1374"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1374"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}