Existence of blocking patent can discount evidence of commercial success, failure of others, and long-felt but unmet need
The patentee sued the Abbreviated New Drug Application (ANDA) filers for infringement of patents covering its multiple sclerosis treatment, Ampyra®. The district court found four of the asserted patents to be obvious. The district court also determined that a broader patent licensed by the patentee (the “blocking patent”) was valid. The patentee appealed the judgment of obviousness. The blocking patent expired before the appeal was decided.
The Federal Circuit affirmed the obviousness determination, holding that the district court correctly determined that a person of ordinary skill in the art would have been motivated to arrive at the claimed invention by the prior art, and in doing so, would have had a reasonable expectation of success.
The Federal Circuit rejected the patentee’s argument that the district court improperly applied a categorical rule that the existence of a blocking patent negates any findings in favor of the patentee on the objective indicia of nonobvious of commercial success, failure of others, and long-felt but unmet need. A “blocking patent” exists where the practice of a later invention would infringe the earlier patent. The Federal Circuit acknowledged that the existence of a blocking patent may deter non-owners and non-licensees from investing the resources to develop and market a later “blocked” invention. Therefore, the court held that the existence of a blocking patent can be evidence that discounts the significance of evidence that only the blocking patent’s owners or licensees developed and marketed the later “blocked” invention covered by the asserted patent. The Federal Circuit held that the district court did not apply an improper categorical rule, but properly considered the facts in evidence and determined that the existence of the blocking patent diminished the evidence supporting secondary considerations.