{"id":2205,"date":"2018-09-10T14:43:02","date_gmt":"2018-09-10T18:43:02","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2205"},"modified":"2018-09-15T21:32:08","modified_gmt":"2018-09-16T01:32:08","slug":"just-because-seldom-was-heard-a-discouraging-word-did-not-mean-the-invention-was-obvious","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2205","title":{"rendered":"Just Because Seldom was Heard a Discouraging Word Did Not Mean The Invention Was Obvious"},"content":{"rendered":"

In Orexo AB v. Actavis Elizabeth LLC<\/a> [2017-1333](September 10, 2018), the Federal Circuit reversed the district court’s determination that the challenged claims of U.S. Patent No. 8,940,330 were invalid for obviousness.<\/p>\n

The invention related to pills for treating opiod addition, that were less susceptible to misuse, where the active ingredient, buprenorphine, was adhered to carrier particles of citric acid.\u00a0 The district court relied upon a patent disclosing the use of citric acid to reduce the pH of an orally dissolvable film.\u00a0 However the Federal Circuit found taht the claimed structure was achieved\u00a0solely upon the hindsight knowledge of the
\nstructure and benefits described in the \u2019330 Patent.<\/p>\n

Orexo argued that citric acid is\u00a0nowhere used or listed or suggested as a carrier particle in the prior art, and at oral argument Actavis conceded\u00a0that no reference teaches using citric acid as a carrier\u00a0particle, or that citric acid should be used as a carrier\u00a0particle.\u00a0 The district court finding that\u00a0a person of\u00a0ordinary skill in the art would not have excluded citric\u00a0acid, was not the same as a teaching or suggestion\u00a0to use citric acid. The Federal Circuit observed that the mere fact that the prior art could<\/em> be\u00a0so modified would not have made the modification obvious\u00a0unless the prior art suggested the desirability of the\u00a0modification. The Federal Circuit said that the record does not contain clear and\u00a0convincing evidence of a teaching or suggestion to use\u00a0citric acid particles as a carrier for this opioid product in\u00a0substitution therapy, or that the actual beneficial results\u00a0would be obtained.<\/p>\n

In response to the district court’s observation that\u00a0\u201cthere is nothing in the prior art which would have discouraged\u00a0a person of ordinary skill from following the\u00a0path set out in the various references,\u201d the Federal Circuit said that “no reference or combination of references proposes\u00a0the path of the \u2019330 Patent.”<\/p>\n

The district court erred in discounting objective indicia of nonobviousness, and concluded that obviousness had not been established by clear and convincing evidence.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Orexo AB v. Actavis Elizabeth LLC [2017-1333](September 10, 2018), the Federal Circuit reversed the district court’s determination that the challenged claims of U.S. Patent No. 8,940,330 were invalid for obviousness. The invention related to pills for treating opiod addition, … 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-2205","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\/2205","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=2205"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2205\/revisions"}],"predecessor-version":[{"id":2206,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2205\/revisions\/2206"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2205"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2205"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2205"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}