The district court found the asserted claims not invalid as obvious, reasoning that Sandoz presented substantially the same arguments and evidence in an earlier dispute with Allergan in which we held that claim 4 of the '149 patent recited an efficacy limitation that is neither suggested nor inherent in any prior art in the record. J.A. 74-76; see also Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1293-94 (Fed. Cir. 2013). Relying on that precedential decision, the court found that all asserted claims recited analogous efficacy limitations, neither suggested nor inherent in prior art produced by Sandoz.
The determination of obviousness is a legal conclusion based on underlying facts. Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290-91 (Fed. Cir. 2013). After a bench trial, we review the district court's factual findings for clear error and its conclusions of law de novo.
“[T]he problem motivating the patentee may be only one of many addressed by the patent's subject matter.” Id. at 420; see Janssen Pharm., Inc. v. Teva Pharm. USA, Inc., 97 F.4th 915, 929 (Fed. Cir. 2024) (“A motivation ‘may be found in many different places and forms.'” (quoting Allergan, Inc. v. Sandoz, Inc., 726 F.3d 1286, 1292 (Fed. Cir. 2013)). “What matters is the objective reach of the claim.” KSR, 550 U.S. at 419.
Allergan and Sandoz both appealed the Court's ruling to the Federal Circuit. See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286 (Fed. Cir. 2013). On appeal, the Federal Circuit reversed-in-part, finding that the asserted claims of the '463 patent were invalid as obvious.
Allergan and Sandoz both appealed the Court's ruling to the Federal Circuit. SeeAllergan, Inc. v. Sandoz Inc. , 726 F.3d 1286 (Fed.Cir.2013). On appeal, the Federal Circuit reversed-in-part, finding that the asserted claims of the '463 patent were invalid as obvious.
Obviousness under 35 U.S.C. § 103 is a question of law based on underlying questions of fact. Allergan, Inc.v. Sandoz Inc. , 726 F.3d 1286, 1290 (Fed. Cir. 2013). Watson and Sandoz accept the legal framework under which they had to establish that, as of February 2008, a person of ordinary skill in the art would have had a reasonable expectation that the processes claimed would succeed in their (claimed) aims, a factual issue.
Invalidity by reason of obviousness under 35 U.S.C. § 103is a legal conclusion based on underlying facts. Allergan, Inc. v. Sandoz Inc. , 726 F.3d 1286, 1290 (Fed.Cir.2013). Zimmer has the burden to prove invalidity by clear and convincing evidence.
Invalidity by reason of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts. Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1290 (Fed.Cir.2013). Zimmer has the burden to prove invalidity by clear and convincing evidence.
Here, however, I/P Engine introduced scant evidence on secondary considerations. See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1293 (Fed. Cir. 2013) (concluding that secondary considerations did "not weigh heavily in the obviousness analysis"). Indeed, the district court did not even cite to the jury's findings on secondary considerations when it concluded that the asserted claims were not invalid for obviousness.
We have held an invention to be obvious despite findings of unexpected results. See, e.g., Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1293 (Fed.Cir.2013); Alcon Research, Ltd. v. Apotex, Inc., 687 F.3d 1362, 1365, 1369–70 (Fed.Cir.2012); Pfizer, 480 F.3d at 1372. B.