In the patent case between
Prometheus Laboratories and a combination of Roxane Laboratories and Cipa Ltd.,
the U.S. Court of Appeals for the Federal Circuit upheld the finding from the U.S.
District Court for the District of New Jersey of patent invalidity on the basis
of obviousness but did not reach the issue of invalidity due to double
patenting.
The patent at issue, U.S. Patent
No. 6,284,770, relates to Prometheus’ medication used to treat irritable bowel
syndrome (IBS), Lotronex. Prometheus filed suit against Roxane alleging
infringement of select claims of the ‘770 patent. Roxane challenged the
validity of the ‘770 patent under theories of obviousness and obviousness-type
double patenting in view of another patent owned by Prometheus and the state of
the prior art of treating IBS. The parties agreed on the level of one of skill
in the art of the ‘770 patent), a gastroenterologist with three years of
experience).
Finding this case to another case
between AbbVie Inc. versus Mathilda and Terrence Kennedy Institute of
Technology, the court held that 1) the ‘770 patent was obvious; 2) secondary
considerations did not support a conclusion that the patent was not obvious;
and 3) the district court did not improperly shift the burden of proof to
Prometheus to demonstrate a connection between its secondary consideration
evidence and the ‘770 patent claims to show non-obviousness.
In essence, the court did not
find significant differences between the prior art and the limitations
mentioned in claim five of the ‘770 patent. Additionally, the court found that
Prometheus had not provided sufficient evidence of commercial success following
its re-launch of the drug with prescribing information mirroring the ‘770
patent claims. The court concluded the incremental increase in Lotronex revenue
was due to marketing activity and increases in sales price.
In conclusion, I believe that the
courts ruled correctly against Prometheus Laboratories. Their development,
while scientifically beneficial, does not improve enough on prior art and does
not extend far enough from prior art.
Hi Jay,
ReplyDeleteI found your conclusion particularly interesting when you admit that Prometheus Laboratories may provide scientific benefits--but still remains an obvious progression of research to treat IBS. I found your analysis very easy to follow and informative. Thanks for a great read!
Great post! I think that as obviousness becomes an increasingly more relevant IP issue, demonstrating what distinguishes obvious from non-obvious methods and products will ensure that companies have the capacity to conserve, protect, and enforce their IP that gives them a competitive advantage.
ReplyDelete