Richards Layton & Finger
 

Judge Robinson Finds One Patent Invalid as Obvious, Another Not Invalid

December 15, 2016

In Orexo AB v. Actavis Elizabeth LLC, Civ. No. 14-829-SLR (Nov. 15, 2016), an ANDA case, Judge Robinson found one of the two patents-in-suit invalid as obvious after trial. The Court held a five-day bench trial to address the issues of infringement and validity. The patents relate to a drug used to treat opioid dependence.

Regarding the first patent, Judge Robinson concluded that “although a person of ordinary skill upon reading the prior art would not necessarily be discouraged from trying interactive mixtures in a sublingual formulation,” the defendant did not meet its burden of proving that a “person of ordinary skill would be motivated to use the competing prior art teachings to arrive at the [patent] combination.” Accordingly, the Court held that the patent was not invalid as obvious.

With respect to the second patent, Judge Robinson found that the defendant demonstrated by clear and convincing evidence a motivation to combine and a reasonable expectation of success. The Court reviewed the secondary considerations, and although Judge Robinson found that the unexpected result of increased bioavailability provided some support for nonobviousness, the Court concluded that long-felt need and copying arguments were not “persuasive evidence” of nonobviousness. Accordingly, the Court held the second patent was invalid as obvious.

Finally, the Court found that the defendant’s tablet infringed the first patent. The parties disputed whether the defendant’s products are “interactive mixtures.” Judge Robinson credited the testimony of the plaintiffs’ experts and concluded that, despite the defendant’s criticisms of such opinions, the plaintiffs had proven by a preponderance of the evidence that the defendant’s tablet infringed the asserted claims.

Key Points:  A defendant may still meet its burden on obviousness even though some evidence points to nonobviousness.