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IP: Is there a shelf life for invalidating prior art?

The Federal Circuit finds older prior art less reliable in attempting to show obviousness

In a somewhat rare reversal of an obviousness decision by the Board of Patent Appeals and Interferences, the Federal Circuit’s recent decision in Leo Pharmaceutical Products, Ltd. v. Rea provides important guidance in navigating the post-KSR landscape. In applying a common-sense evaluation of the facts, the court placed great emphasis on the passage of time between the asserted prior art and the claimed invention, which it found “sp[oke] volumes” against obviousness. The court also highlighted the importance of considering whether the prior art disclosed the problem solved by the inventors, and reminded litigants that objective indicia of nonobviousness must be more than a mere “afterthought” in an obviousness analysis.

The ’013 patent-at-issue claimed “storage stable” compositions for the treatment of skin conditions containing, inter alia, vitamin D and a corticosteroid. The prior art recognized the efficacy of vitamin D/corticosteroid treatment but did not disclose any storage-stable combinations of these two ingredients. Instead, the prior art largely recommended separate administration of these drugs, which led to patient-compliance issues.

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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...

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Contributing Author

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Elina Saviharju

Elina Saviharju is an associate in the Litigation practice of Paul Hastings and is based in the firm’s New York office. Ms. Saviharju focuses her...

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