{"id":2207,"date":"2018-09-10T21:32:42","date_gmt":"2018-09-11T01:32:42","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2207"},"modified":"2018-09-16T00:09:37","modified_gmt":"2018-09-16T04:09:37","slug":"blocking-patent-can-explain-long-felt-but-unmet-need-reducing-importance-of-objective-indicia-of-nonobviousness","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2207","title":{"rendered":"Blocking Patent Can Explain Long-Felt But Unmet Need, Reducing Importance of Objective Indicia of Nonobviousness"},"content":{"rendered":"

In Acorda therapeutics, Inc. v. Roxane Laboratories, Inc.<\/a>, [2017-2078, 2017-2134] (September 10, 2018), the Federal Circuit\u00a0affirmed the judgment that the\u00a0asserted claims of U.S. Patent Nos. 8,007,826; No. 8,663,685; No. 8,354,437; and\u00a0No. 8,440,703, were invalid, and dismissed\u00a0the cross-appeal regarding U.S. Patent No. 5,540,938, which expired while the appeal was pending, as moot.\u00a0 The patents all relate to improvement of the gait of persons with multiple sclerosis.<\/p>\n

Acorda made three arguments on appeal against the determination of obviousness:
\nFirst, that the district court\u00a0erred in finding that a person of skill would have had a
\nmotivation to combine the prior art to arrive at the Acorda\u00a0invention and a reasonable expectation of success in\u00a0doing so. Second, that the district court erred in findng that the limitations relating to pharmacokinetics are inherent in the claimed invention and therefore\u00a0obvious. Third, that the court improperly\u00a0applied a categorical rule that a blocking patent negates any findings in favor of Acorda on the\u00a0objective indicia of commercial success, failure of others,\u00a0and long felt but unmet need.<\/p>\n

Regarding the motivation to combine, Acorda argued that the prior art teaches away from the invention, but the Federal Circuit found that the prior art supported a motivation to combine with a reasonable expectation of success, and that the district did not clearly err in\u00a0finding that a\u00a0person of skill would look to the claimed lower doses rather than
\nhigher ones.\u00a0 Regarding Accorda’s arguments against the inherency of the pharmokinetic limitations, the Federal Circuit said that the court invoked the\u00a0principle that an obvious formulation cannot become\u00a0nonobvious simply by administering it to a patient and\u00a0claiming the resulting serum concentrations, and concluded that the pharmacokinetic limitation\u00a0could not alter the obviousness analysis.\u00a0 \u00a0The Federal Circuit found that the Acorda had not pointed to any evidence to contradict the district court’s assumption.<\/p>\n

Finally, regarding the argument that the district court improperly\u00a0applied a categorical rule that the existence of a blocking negated objective evidence of non-obviousness, the Federal Circuit explained that\u00a0a blocking patent can diminish the possible\u00a0rewards from a non-owner\u2019s or non-licensee\u2019s investment\u00a0activity aimed at an invention whose commercial exploitation\u00a0would be infringing, therefore reducing incentives for
\ninnovations in the blocked space by non-owners and nonlicensees\u00a0of the blocking patent. The Federal Circuit said that such a blocking patent\u00a0therefore can be evidence that can discount the significance\u00a0of evidence that nobody but the blocking patent\u2019s
\nowners or licensees arrived at, developed, and marketed\u00a0the invention covered by the later patent at issue in\u00a0litigation. However, the the magnitude of the diminution in incentive\u00a0in any context\u2014in particular, whether it was great\u00a0enough to have actually deterred activity that otherwise\u00a0would have occurred\u2014is \u201ca fact-specific inquiry.\u201d\u00a0 The Federal Circuit concluded that in a particular case, a court\u00a0may ultimately be left, for its evaluation, with the solid\u00a0premise of diminished incentives, plus some evidence\u00a0 (possibly weak or ambiguous) about the significance of the\u00a0deterrence, together with a background sense of the\u00a0general realities in the area at issue that can affect the
\nweight to be given to the evidence in the specific case.\u00a0 Against this background, the Federal Circuit examined the district court’s consideration of objective indicia.\u00a0 The Federal Circuit found\u00a0no clear error in the district court’s discounting evidence of long-felt, unmet need, in view of the evidence of\u00a0blocking.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Acorda therapeutics, Inc. v. Roxane Laboratories, Inc., [2017-2078, 2017-2134] (September 10, 2018), the Federal Circuit\u00a0affirmed the judgment that the\u00a0asserted claims of U.S. Patent Nos. 8,007,826; No. 8,663,685; No. 8,354,437; and\u00a0No. 8,440,703, were invalid, and dismissed\u00a0the cross-appeal regarding U.S. Patent … 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-2207","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\/2207","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=2207"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2207\/revisions"}],"predecessor-version":[{"id":2208,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2207\/revisions\/2208"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2207"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2207"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2207"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}