{"id":2069,"date":"2018-06-28T10:26:04","date_gmt":"2018-06-28T14:26:04","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2069"},"modified":"2018-07-01T10:59:39","modified_gmt":"2018-07-01T14:59:39","slug":"federal-circuit-affirms-non-obvious-holding-in-close-case-declining-to-disturb-factual-findings-on-motiviation","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2069","title":{"rendered":"Federal Circuit Affirms Non-obvious Holding in “Close” Case, Declining to Disturb Factual Findings on Motiviation"},"content":{"rendered":"

In Impax Laboratories Inc. v. Lannett Holdings Inc.<\/a>, [2017-2020] (June 28, 2018), the Federal Circuit affirmed the district court decision that claims\u00a04, 11, 12, and 14 of U.S.\u00a0Patent 6,760,237 and claims 6 and 14\u2013
\n16 of U.S. Patent 7,220,767 were not\u00a0shown to be invalid and entering an injunction.<\/p>\n

The claims\u00a0at issue are directed to pharmaceutical\u00a0formulations, intranasal administration devices, or aqueous\u00a0solutions, of zolmitriptan.\u00a0 The Federal Circuit noted that\u00a0all of the claims at issue rise and fall\u00a0together with the issue of whether it would have been\u00a0obvious to make zolmitriptan into a nasal spray.<\/p>\n

In considering the asserted obviousness of the claimed invention, the Federal Circuit noted that while the reference mentioned the possible nasal administration of\u00a0zolmitriptan (just once, and not in a claim or an example), the reference was not about administering\u00a0zolmitriptan, but about the nasal administration of active ingredients generally.\u00a0 The Federal Circuit also noted evidence in the record that a\u00a0skilled artisan would have\u00a0expected delayed or lower therapeutic effectiveness from
\nzolmitriptan if administered nasally because it would\u00a0have been \u201cabsolutely counterintuitive to make a nasal\u00a0spray when you have an active metabolite which is more\u00a0potent . . . than the drug itself.\u201d<\/p>\n

The Federal Circuit said that:<\/p>\n

In view of the totality of the record evidence of the\u00a0state of the prior art, we cannot find that the district\u00a0court clearly erred in its findings. Far from disregarding\u00a0the prior art\u2019s discussion of zolmitriptan, the court specifically\u00a0considered and acknowledged that zolmitriptan was\u00a0mentioned in connection with nasal formulations and
\nsprays. However, the court also properly considered\u00a0additional record evidence to make findings on the state\u00a0of the prior art as a whole.<\/p><\/blockquote>\n

The Federal Circuit noted that the presence or absence of a motivation to combine\u00a0references in an obviousness determination is a pure\u00a0 question of fact, as is what a reference teaches and\u00a0whether it teaches toward or away from the claimed\u00a0invention.\u00a0 Based on the record before it, the Federal Circuit could not find that the\u00a0court clearly erred in concluding that at the time,\u00a0zolmitriptan\u2019s known significant reliance on its active\u00a0metabolite would have, on balance, dissuaded a person of
\nskill in the art from making nasal formulations of\u00a0zolmitriptan.\u00a0 The Federal Circuit said that it\u00a0does not and should not\u00a0reweigh evidence or make factual findings anew on appeal.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Impax Laboratories Inc. v. Lannett Holdings Inc., [2017-2020] (June 28, 2018), the Federal Circuit affirmed the district court decision that claims\u00a04, 11, 12, and 14 of U.S.\u00a0Patent 6,760,237 and claims 6 and 14\u2013 16 of U.S. Patent 7,220,767 were … 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":[79,12],"tags":[],"class_list":["post-2069","post","type-post","status-publish","format-standard","hentry","category-anda","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2069","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=2069"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2069\/revisions"}],"predecessor-version":[{"id":2071,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2069\/revisions\/2071"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2069"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2069"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2069"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}