Acorda Therapeutics and the Role of Blocking Patents in Assessing Objective Indicia of Nonobviousness in the Pharmaceutical Arts
37 BIOTECHNOLOGY LAW REPORT 305 (2018)
9 Pages Posted: 6 Mar 2023
Date Written: 2018
Abstract
Non-technical evidence of inventiveness, often referred to as “secondary considerations” or “objective indicia,” plays an important (albeit disputed) role in assessing the nonobviousness of a patented invention under U.S. law. A recent decision of the Federal Circuit, Acorda Therapeutics v. Roxane Labs., affirmed a district court decision that, in the course of invalidating a pharmaceutical method claim for reasons of obviousness, attributed “little probative value” to multiple objective indicia of nonobviousness, i.e., commercial success, long-felt need, and the failure of others, due to the existence of a “blocking patent” that would have been infringed by the practice of the claimed method at the time of its invention. The decision is an important one for the pharmaceutical arts, as evidenced by amicus briefs that were filed in the case by the Pharmaceutical Research and Manufacturers Association (PhRMA) and the Biotechnology Innovation Organization (BIO) on behalf of the patent owner. This article discusses the phenomenon of blocking patents, particularly in the pharmaceutical arts, and the prominent role they have taken in some recent Federal Circuit decisions assessing the probative value of certain objective indicia of nonobviousness, most prominently an invention’s commercial success. Much of the focus of the article is directed towards the Federal Circuit’s divided decision in Acorda Therapeutics, including a look at the amicus briefs filed by BIO and PhRMA.
Keywords: patents, obviousness, secondary considerations, objecive indicia, pharmaceuticals, biotechnoogy, Acorda
Suggested Citation: Suggested Citation