Intellectual Property Law

Federal Circuit provides more post-KSR guidance for obviousness for chemical compounds

By McKee, Voorhees & Sease, P.L.C.

In a decision Monday, the Federal Circuit affirmed a district court's decision finding asserted claims of a patent valid and enforceable.  Specifically, the court affirmed a finding that the asserted claims were nonobvious as a matter of law, and that the evidence did not support a finding of inequitable conduct.  

The Federal Circuit, applying KSR Int'l Co. v. Teleflex Inc. in the context of similarly-structured chemical compounds stated: "[P]ost-KSR, a prima facie case of obviousness for a chemical compound still, in general, begins with the reasoned identification of a lead compound."  In this case, because there was no adequate explanation for why the defendant's asserted "lead compound" would actually be used by one of ordinary skill in the art, the patent was not shown to be obvious.

The defendants also brought several accusations of inequitable conduct, the court found none of them to be persuasive.  The court held that in order to have a finding of inequitable conduct there must be a clear intent to deceive the Examiner and this is a very high standard.  In this case, some questionable conduct had occurred, but ultimately the court said it was clear that no intent to deceive had existed.  Therefore, no inequitable conduct had occurred.  

More on Eisai Co. v. Dr. Reddy's Labs., Ltd. after the jump.

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Full post as published by FileWrapper on July 24, 2008 (boomark / email).