Drug: Ezetimibe

The Federal Court granted a prohibition order, holding that Teva’s allegation that the patent at issue was obvious was not justified.

The Court considered the experts from both sides on the issue of obviousness and held that while Teva’s expert’s process to answer the problem solved by the patent may have been “worth a try”, that is not the applicable legal test. Furthermore, it was not obvious to try, nor was it more or less self-evident to obtain the invention in this way based on the prior art. The reality of Merck’s efforts, the team working over an extended time, the time and money it expended, as well as the stops and starts, successes and failures, all belie Teva’s expert’s approach that everything was there in front of Merck and all they had to do was perform the additive sum.

The Court then held that Teva’s expert knew what the result of his thesis should be and then developed the methodology to achieve it. In the non-technical sense, the Court held that he reverse engineered the patent. It is a simple human fact that matters are always simpler in hindsight. However, when working the prior art, Merck not only did not know the steps to take or the course to develop, it was not even certain of the destination. Thus the allegations as to obviousness were not justified.