{"id":2352,"date":"2019-01-26T23:04:02","date_gmt":"2019-01-27T04:04:02","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2352"},"modified":"2019-01-26T23:04:02","modified_gmt":"2019-01-27T04:04:02","slug":"working-backwards-with-the-benefit-of-hindsight-does-not-render-compound-obvious","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2352","title":{"rendered":"Working Backwards with the Benefit of Hindsight, Does not Render Compound Obvious"},"content":{"rendered":"\n

In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH<\/a>, [2017-2596] (January 11, 2019), the Federal Circuit claims affirmed the PTAB\u2019s determination that claims 1\u20135 and 21\u201324 of U.S. Patent 6,858,650 on an antimuscarinic drug marketed as Toviaz\u00ae to treat urinary incontinence were not unpatentable as obvious.<\/p>\n\n\n\n

The Federal Circuit noted that its review of a Board\ndecision is limited. The Federal Circuit reviews the Board\u2019s legal\ndeterminations de novo, and the Board\u2019s factual findings underlying those\ndeterminations for substantial evidence. \nThe Federal Circuit explained that a finding is supported by substantial\nevidence if a reasonable mind might accept the evidence as adequate to support\nthe finding.<\/p>\n\n\n\n

The Federal Circuit agreed that the Board did not legally err and that substantial evidence supports the Board\u2019s findings.\u00a0 As to Amerigen\u2019s argument that a person of ordinary skill would have been motivated to modify 5-HMT to increase its lipophilicity, the Federal Circuit said that a a reasonable fact finder could have weighed UCB\u2019s expert testimony over Amerigen\u2019s, and concluded that substantial evidence supported the Board\u2019s finding that a person of ordinary skill would not have been motivated to modify 5-HMT\nto increase its lipophilicity.<\/p>\n\n\n\n

As to Amerigen\u2019s argument that increasing lipophilicity \u201cin\nand of itself\u201d (i.e., independent of bioavailability concerns) would have\nmotivated a person of ordinary skill to modify 5-HMT, the Federal Circuit noted\nthat Amerigen did not present this theory to the Board, and could point to no\nevidence in the record to support of it, and did not explain why a skilled\nartisan would modify a drug to increase its lipophilicity independent of\nbioavailability.<\/p>\n\n\n\n

As to Amerigen\u2019s argument that a skilled artisan would have\nbeen motivated to modify 5-HMT because 5-HMT was patented at the time of\ninvention, the Federal Circuit noted that there was no indication that such a\nmotivation was sufficient to prove that the claimed compounds would have been\nobvious.  The Federal Circuit said:<\/p>\n\n\n\n

Any compound may look obvious once someone has made it and found it to be useful, but working backwards from that compound, with the benefit of hindsight, once one is aware of it does not render it obvious. <\/p><\/blockquote>\n\n\n\n

Any compound may look obvious once\nsomeone has made it and found it to be useful, but working backwards from that\ncompound, with the benefit of hindsight, once one is aware of it does not\nrender it obvious.<\/p>\n\n\n\n

The\nFederal Circuit said it considered Amerigen\u2019s remaining arguments, and not find\nthem persuasive, and thus affirmed the Board\u2019s decision.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, [2017-2596] (January 11, 2019), the Federal Circuit claims affirmed the PTAB\u2019s determination that claims 1\u20135 and 21\u201324 of U.S. Patent 6,858,650 on an antimuscarinic drug marketed as Toviaz\u00ae to treat urinary incontinence … 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":[12],"tags":[],"class_list":["post-2352","post","type-post","status-publish","format-standard","hentry","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2352","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=2352"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2352\/revisions"}],"predecessor-version":[{"id":2353,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2352\/revisions\/2353"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2352"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2352"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2352"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}