Tag Archives: Unexpected Results

Federal Circuit Find Fractures in Roche Boniva Patents

In Hoffman-LaRoche, Inc. v. Apotex, Inc., the Federal Circuit affirmed the district court’s summary judgment that two Roche Boniva patents are invalid as obvious. The conclusion of obviousness is not particularly remarkable based on the Federal Circuit s recounting of the prior art, but the court’s willingness to affirm invalidity on summary judgment where the record included … Continue reading this entry

Federal Circuit Invalidates Galderma Differin Patents

In Galderma Laboratories v. Tolmar, Inc., the Federal Circuit reversed the district court’s findings that the Orange Book-listed patents for Galderma’s Differin® 0.3% gel product were not invalid as obvious. In so doing, the Federal Circuit took a narrow view of “unexpected results” that Judge Newman warns may “disincentivize” improvement patents in the field of … Continue reading this entry

Federal Circuit Finds Taclonex Patent Not Obvious, Reverses USPTO Decision

In Leo Pharmaceutical Products, Ltd. v. Rae, the Federal Circuit issued a rare decision reversing an obviousness determination by the USPTO Patent Trial and Appeal Board (PTAB). The patent at issue was a Taclonex® patent, and the court found both that the prior art did not render the claimed combination formulations obvious and that the … Continue reading this entry

Federal Circuit Invalidates Prandin Patent Claim As Obvious

In its third look at the Novo Nordisk A/S patent related to Prandin®, in Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories Ltd., the Federal Circuit affirmed the district court’s finding that claim 4 of U.S. Patent No. 6,677,358 is invalid as obvious, but reversed the district court’s finding that the patent is unenforceable due to … Continue reading this entry

Federal Circuit Upholds One Claim Covering Combigan

In Allergan, Inc. v. Sandoz, Inc., the Federal Circuit reversed the district court in part, finding that Allergan’s composition claims and most of its method claims are invalid as obvious, but upholding one method claim because it recites a non-obvious result. Some of the court’s reasoning in this opinion is troubling, and the non-obvious result … Continue reading this entry

Federal Circuit Clarifies Obviousness-Type Double Patenting Between Products And Methods

In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., the Federal Circuit affirmed the district court’s decision that Eli Lilly’s patent to pemetrexed is not invalid for obviousness-type double patenting. The Federal Circuit’s decision provides important guidance on one of the most complex areas of  U.S. patent jurisprudence, and explains how information in the specification … Continue reading this entry

Federal Circuit Permits Post-Filing Date Unexpected Results To Support Non-Obviousness

The Federal Circuit decision in Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc. is interesting in several respects. In this article, I look at the court’s decision to permit unexpected results discovered after the patent applications at issue were filed to support non-obviousness.… Continue reading this entry

Federal Circuit Reverses Rejection Based On Board Conjecture

The recent Federal Circuit decision in In re Huai-Hung Kao addressed obviousness rejections in three separate patent applications assigned to Endo Pharmaceuticals, Inc. The court affirmed the Board’s rejections in two of the applications, but vacated and remanded in the other application. This article looks at the court’s finding in that application that the rejection … Continue reading this entry