The district court entered judgment of obviousness where a particular claim limitation was not explicitly disclosed in the prior art combination, but was found to be inherently present.  The Federal Circuit held that a party attacking the validity of a patent claim on the basis of obviousness must meet a high standard: “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.”  Here, the evidence presented by the experts did not make such a showing and therefore the obviousness holding was vacated and the case remanded for further findings.  The court did affirm the district court’s findings on the issues of motivation to combine, reasonable expectation of success, and objective indicia of non-obviousness, all of which pointed to obviousness.

Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc., Case No. 2014-1391 (December 3, 2014); Opinion by: O’Malley, joined by Wallach, Hughes; Appealed From: District of Maryland, Blake, J. To read the full opinion, click here.

If you have questions or need more information, please contact

Jump to Page