Today, Mon., Apr. 16, 2012, in Eurand v. Mylan, No. 2011-1399, the Federal Circuit (Newman, O’Malley and Reyna) reversed a bench trial judgment that pharmaceutical patents would have been obvious because the district court improperly first found obviousness and then looked to secondary indicia to rebut that finding, which led to hindsight selection of secondary indicia to support the district court’s obviousness “hunch.” The Court ruled that there is no burden-shifting when litigating obviousness – all evidence must be considered before assessing whether the patent challenger met its burden to prove obviousness by clear and convincing evidence.
This case provides the most current statement for applying the obviousness standard in any case, provides particular guidance for an “obvious-to-try” challenge, and emphasizes secondary indicia of nonobviousness as important tools to avoid hindsight.
The Court also provides incremental guidance on the best mode defense, including its ruling that the American Invents Act’s abrogation of the best mode invalidity defense does not apply to cases filed prior to enactment.