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October 30, 2017

Comments

As is almost always the case when Judge Newman dissents, she has the better of this argument. I think that part of the problem is In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc), which held that unexpected results might sometimes not be enough to overcome a strong case of prima facie obviousness. This assertion is so intuitively self-contradictory as to be absurd on its face, but unfortunately, it is the law. If the results really are *unexpected*, then that proves that the claim is not "obvious." Naturally, Judge Newman also dissented in that case.

...only that nothing in here can be considered an unexpected result, due to the fact that the carbonated molecule itself belonged to the prior art already, used and patented for the exact same purpose of stabilizing the ertapenem as an injectable drug...

Kevin - Do you have thoughts on why neither the majority nor Judge Newman in dissent mentioned Anderson’s Black Rock v. Pavement Salvage, 396 U.S. at 63 (“Use of the radiant-heat burner in this important field marked a successful venture. But, as noted, more than that is needed for invention.”), nor Sakraida v. Ag Pro, 425 U.S. at 283 (“Though doubtless a matter of great convenience, producing a desired result in a cheaper and faster way, and enjoying commercial success, Dairy Establishment did not produce a new or different function . . . within the test of validity of combination patents . . . . These desirable benefit without invention will not make patentability.”). After all, these are Supreme Court decisions that seem to be (at the very least) relevant to the issue at hand, and were cited favorably in KSR.

Joseph, I think the Federal Circuit will do whatever it can to avoid the inchoate "invention" standard in favor of the statutory obviousness standard (and it's a good thing they do). The Supreme Court thinks Congress (and Judge Rich and PJ Federico) intended to codify their invention standard, when in fact they were trying to take the important gist of the Supreme Court's intuition, that some novel improvements are not sufficiently different from the prior art to merit patent protection, and provide an objective way to determine when that happens. The Supreme Court can pay lip service to the idea of hindsight but they don't delve far enough into the analysis to apprehend the difficulties involved in applying the obviousness standard in practice.

Remember, the majority affirmed the district court's decision that the claims were obvious, and Judge Newman doesn't actively dispute that holding. She does believe that the way both the district court and the panel majority came to that decision is the error; I'm not sure how either of the Supreme Court cases you mention address that issue.

Thanks for the comment.

Anonymous: the outcome-determinative mode of analysis that you impliedly espouse is not the issue: remember that both the district court and the Federal Circuit majority came to that conclusion, and Judge Newman does not say that it was wrong. She says the analysis is flawed, based on the Graham factors (i.e., following the Supreme Court's precedent) and thus dissents. Either way the patent is invalid; I wonder, though, whether molecules prepared as taught in the prior art had the same inherent resistance to hydrolysis as Merck's formulation - from your comment it seems you do, and I have no reason to doubt it. But the failure of that point to be made, by Hospira or the courts, seems curious.

Sometimes the unexpected results doctrine can be in conflict with obvious to try doctrine, maybe this decsion is one example. Lemley, Mark A., Expecting the Unexpected (September 28, 2015). Stanford Public Law Working Paper No. 2666626. Available at SSRN: https://ssrn.com/abstract=2666626 or http://dx.doi.org/10.2139/ssrn.2666626

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