More On

IP: Is the Federal Circuit trying to merge inherency and obviousness?

If inherency and obviousness become merged, there are several consequences that litigants should be mindful of when navigating anticipation and obviousness.

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.

Contributing Author

author image

Eric Dittmann

Eric W. Dittmann is a partner in the Litigation practice of Paul Hastings. Mr. Dittmann focuses his practice on intellectual-property litigation and client counseling in...

Bio and more articles

Contributing Author

author image

Jamie Lucia

Jamie Lucia is an associate in the New York office of Paul Hastings, focusing on the representation of innovator companies in the field of life...

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.