Summary: CAFC affirmed district court’s finding of obviousness.

Case: Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA, Inc., No. 2013-1306 (Fed. Cir. June 12, 2014) (precedential). On appeal from D. Del. Before Prost, Plager, and Chen.

Procedural Posture: Plaintiff-patentee appealed from final judgment of invalidity. CAFC affirmed.

  • Obviousness: The district court correctly held a claim to a nucleoside analog invalid as obvious because a person of ordinary skill in the art would have selected 2’-CDG as a lead compound and made a minor modification to arrive at the claimed invention. Holding that unexpected results do not per seprevent a finding that a modification to a lead compound will yield expected, beneficial results, the court determined that a new chemical entity may be obvious even if the claimed compound possesses unexpected properties. The district court’s factual findings on the secondary considerations of nonobviousness of unexpected results, commercial success, and long-felt need were not clearly erroneous.

Nathaniel DeLucia