June 19, 2014

Federal Circuit Decisions for Week Ending June 13, 2014

Allergan, Inc. v. Apotex Inc. Nos. 2013-1245, -1246, -1247 (June 10, 2014) (precedential, 2-1), U.S. Patent Nos. 7,388,029 and 7,351,404

Key points:

  • Inherent anticipation of a claim is not established based solely on the possibility of a reference teaching a limitation.
  • The priority date of an invention is not established based solely on oral testimony from an inventor in the absence of corroborating documentary evidence.

Bristol-Meyers Squibb Company v. Teva Pharmaceuticals USA, Inc., No. 2013-1306 (June 12, 2014) (precedential, 3-0), U.S. Patent No. 5,206,244

Key points:

  • To establish obviousness in a case involving a new chemical compound, a party must identify a reason to select a lead compound and a motivation to modify that compound.
  • In determining obviousness, an expectation of success is evaluated from the perspective of one of ordinary skill at the time of the invention.
  • Unexpected properties are not per se fatal to a finding of obviousness when the claimed invention exhibits expected properties that a person of ordinary skill would have appreciated at the time of the invention.

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