{"id":1803,"date":"2017-10-26T18:39:53","date_gmt":"2017-10-26T22:39:53","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1803"},"modified":"2017-11-06T23:12:03","modified_gmt":"2017-11-07T04:12:03","slug":"objective-indicia-not-enough-to-overcome-weight-of-evidence-of-obviousness","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1803","title":{"rendered":"Objective Indicia Not Enough to Overcome Weight of Evidence of Obviousness"},"content":{"rendered":"

In Merck Sharp & Dohme Corp. v. Hospira, Inc.<\/a>, [2017-1115] (October 26, 2017), the Federal Circuit affirmed the district court’s determination at a bench trial, that claims 21-34 of\u00a0U.S. Patent\u00a06,486,150, on a method for preparing the antibiotic\u00a0ertapenem were invalid for obviousness.<\/p>\n

The district court reviewed Merck\u2019s objective evidence\u00a0and concluded that commercial success and copying by\u00a0others were shown, but that the objective evidence could\u00a0not overcome the \u201cstrong prima facie case of obviousness\u201d\u00a0established by Hospira. The district court found that, while\u00a0there was commercial success tied to the asserted claims,\u00a0the evidence was weakened\u201d by the \u201cblocking effect\u201d of\u00a0U.S. Patent 5,478,820 on\u00a0ertapenem, which was a disincentive to others to develop new\u00a0ertapenem formulations.<\/p>\n

The Federal Circuit agreed with Hospira that the district court did not
\nerr in finding that the claimed process would have been\u00a0obvious at the time the invention was made.\u00a0 While Merck argued that\u00a0the specific order and detail of the\u00a0claimed steps constitute a novel solution to minimizing\u00a0degradation by hydrolysis and\u00a0minimizing dimerization, Merck\u2019s problem was that the purported\u00a0\u201csolution\u201d\u00a0constituted nothing more than conventional\u00a0manufacturing steps that implement principles disclosed\u00a0in the prior art.\u00a0 The Federal Circuit said that\u00a0it was reasonable for the district court to deduce\u00a0from the evidence that the order and detail of the\u00a0steps, if not already known, would have been discovered\u00a0by routine experimentation while implementing known
\nprinciples. The Federal Circuit found that the district court\u2019s analysis thus involved no legal\u00a0error.<\/p>\n

Regarding Merck’s objective evidence of non-obviousness, the Federal Circuit agreed with Merck that Merck’s\u00a0evidence of commercial success should not\u00a0have been discounted simply because of the existence of
\nanother patent of which Merck was the exclusive licensee.\u00a0 The Federal Circuit said that:<\/p>\n

developers of new compounds often obtain a\u00a0package of patents protecting the product, including\u00a0compound, formulation, use, and process patents. Often\u00a0such patents result from Patent Office restriction requirements\u00a0 relating to the technicalities of patent classifications\u00a0and rulings that various aspects of claiming an\u00a0invention cannot be claimed in the same patent. Or they\u00a0may result from continuing improvements in a product or\u00a0process. Thus, multiple patents do not necessarily detract\u00a0from evidence of commercial success of a product or\u00a0process, which speaks to the merits of the invention, not to\u00a0how many patents are owned by a patentee. Commercial\u00a0success is thus a fact-specific inquiry that may be relevant\u00a0to an inference of nonobviousness, even given the existence\u00a0of other relevant patents.<\/p><\/blockquote>\n

Nonetheless, the Federal Circuit did not discern error in the district
\ncourt\u2019s determination that Merck\u2019s evidence of commercial\u00a0success could not overcome the weight of the\u00a0evidence that the claimed process was substantially\u00a0described in the prior art and required only improvement\u00a0by the use of established variations.\u00a0Thus, even giving the evidence of commercial success\u00a0its full and proper weight, the court did not err in concluding\u00a0that the claims would have been obvious at the time\u00a0the invention.<\/p>\n

The Federal Circuit also agreed that the evidence of Hospira’s copying\u00a0could not overcome the\u00a0weight of the competing evidence of obviousness.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Merck Sharp & Dohme Corp. v. Hospira, Inc., [2017-1115] (October 26, 2017), the Federal Circuit affirmed the district court’s determination at a bench trial, that claims 21-34 of\u00a0U.S. Patent\u00a06,486,150, on a method for preparing the antibiotic\u00a0ertapenem were invalid for … Continue reading →<\/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":[53,12],"tags":[],"class_list":["post-1803","post","type-post","status-publish","format-standard","hentry","category-objective-indicia","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1803","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=1803"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1803\/revisions"}],"predecessor-version":[{"id":1804,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1803\/revisions\/1804"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1803"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1803"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1803"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}