Fitch, Even, Tabin & Flannery LLP: Federal Circuit Clarifies Procedure for Nonobviousness Analysis

Fitch, Even, Tabin & Flannery LLP: Federal Circuit Clarifies Procedure for Nonobviousness Analysis

By Calista J. Mitchell

In a decision dated April 16, 2012, the Court of Appeals for the Federal Circuit issued an important ruling on obviousness analyses in patent litigation. In In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, the Federal Circuit clarified that the burden of persuasion does not shift to the patentee in an obviousness determination during patent litigation when considering secondary considerations of nonobviousness.

The court considered whether the district court properly analyzed the obviousness question by reviewing objective considerations of nonobviousness to "rebut" the district court's obviousness finding. The district court had assumed that it was the patentee's burden to disprove the court's initial finding that the asserted claims were obvious. The patentee submitted evidence of several objective considerations of nonobviousness, including the failure of others to make the invention, long-felt but unresolved need, commercial success, and unexpected results. The Federal Circuit ruled that the district court erred by first making an obviousness determination before considering the objective considerations, thereby improperly shifting the burden of persuasion to the patentee.

Turning to the patent at issue, the court found that when looking at the totality of the evidence, the objective considerations of long-felt need and failure of others strongly supported a conclusion of nonobviousness.

For more information on this decision, please contact Fitch Even partner Calista J. Mitchell, the author of this alert.

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