Inherency and obviousness have long been separate invalidity inquiries. The Federal Circuit recently intimated in Allergan, Inc. v. Sandoz Inc., however, that this separation could soon be a thing of the past. In particular, the majority and dissenting opinions suggest that, at least in certain circumstances, “the inherency doctrine may apply to an otherwise obvious claim.” If inherency and obviousness become merged, particularly in the way that the Allergan dissent urged, there are several consequences that litigants should be mindful of when navigating anticipation and obviousness.
In Allergan, the asserted patent included both composition and method-of-treatment claims directed to a combination ophthalmic drug treatment (0.2 percent brimonidine and 0.5 percent timolol). The majority found the composition claims obvious because: both compounds were commercially available in their claimed concentrations, the compounds were known to be more effective when administered serially than when administered alone, and the prior art provided motivation to combine the compounds to increase patient compliance. The majority concluded that the patent holder’s evidence of unexpected results (increased efficacy and reduced side effects) and teaching away were insufficient to overcome Sandoz’s “strong case” of obviousness.