Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., et al.

Under 35 U.S.C. § 103, a patent “may not be obtained . . . if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art.” In Graham v. John Deere Co., 383 U.S. 1 (1966), this Court explained that the obviousness inquiry should encompass objective “indicia” of nonobviousness such as “commercial success, long felt but unsolved needs, [and] failure of others,” id. at 17–18. In the decision below, however, a divided panel of the Federal Circuit discounted what the district court deemed to be Acorda’s “significant” and “convincing” evidence of nonobviousness because the claimed invention—the first drug for treating walking in patients with multiple sclerosis—built on a prior patent licensed to Acorda that supposedly “blocked” other companies from developing the claimed methods. According to the Federal Circuit, the defendants had met their burden of proving obviousness by clear and convincing evidence because Acorda had not “suppl[ied]” its own “evidence to make unreasonable” the district court’s “implicit finding” that “securing freedom from blocking patents . . . is likely important to pharmaceutical research.” The question presented is whether objective indicia of nonobviousness may be partially or entirely discounted where the development of the invention was allegedly “blocked” by the existence of a prior patent, and, if so, whether an “implicit finding” that an invention was “blocked,” without a finding of actual blocking, is sufficient to conclude that an infringer has met its burden of proof.