Commercial Success Of Claimed Product Over Non-Infringing Competitive Products As Evidence Of Non-Obviousness

Author:Mr Richard D. Kelly and Yuki Onoe
Profession:Oblon, McClelland, Maier & Neustadt, L.L.P

During litigation or contested proceeding the patentee can point to commercial success of a product as evidence of non-obviousness of the claimed product. Although some work is necessary to show the nexus between the success in the market and the claimed invention, the evidence showing, for example, the product taking sales from competitive products could help the patentee's case.

Pharmaceutical litigations are typically before generic competition starts, and often involve commercial success of a drug product when no generic counterparts are available on the market. Should the Court consider evidence of such commercial success? Suppose the patentee has the first patent on a drug compound followed by the second patent on a formulation including the drug compound. The formulation enjoys a big success on the market while the first patent blocks from the market the generics or other products containing the same drug compound. When there is such a "blocking patent" where "practice of a later invention would infringe the earlier patent*," how the Court should weigh the evidence of commercial success in evaluating obviousness?

This issue involving blocking patents is discussed in Acorda Therapeutics, Inc., v. Roxane Laboratories, Inc. The patentee Acorda stated in its petition for a writ of certiorari, "[t]he Federal Circuit has manufactured a rigid, legally flawed doctrine," and "applied, and expanded, its so-called "blocking patent" doctrine to invalidate for obviousness Acorda's patents for Ampyra®." In opposition generic makers filed their brief on June 7, 2019, stating "[t]he Federal Circuit recognized that the significance of blocking patents is a fact-specific inquiry and simply found no clear error in this district court's factual findings and ultimate determination that respondents' strong evidence that Acorda's patent claims were obvious as a technical matter clearly outweighed Acorda's relatively weak evidence regarding secondary...

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