I mentioned the key-points from the case we discussed in class between KSR International and Teleflex in my previous blogpost.
Through the case, the Supreme Court provided guidance on predictability- if there is a market pressure to solve a specific problem with a few possible solutions and predictable results, then a skilled person has good reason to pursue the invention, and his or her ultimate success might be viewed as obvious. If, however, the field prior to the invention is littered with cautionary tales that "taught away" from the invention- for example, failures or concerns about the feasibility, safety, or efficacy of the invention, then the inventor's ultimate success would not be deemed obvious.
One such example is the litigation involving Takeda's Actos, which is a $2 billion diabetes drug. It demonstrates the importance of "teaching away" in assessing patent obviousness. The infringer alleged that the patented compound was obvious over known "compound b". However, compound b had negative effects including increased body weight. Therefore, because of these effects, the court determined that modifying compound b was not a "predictable" solution for diabetes and hence, not obvious.
Hi Srushti,
ReplyDeleteI liked how you took a unique approach with this assignment by first defining an important concept within obviousness and then providing an example. In my research this week, I also encountered many cases where the patent was found to be non-obvious because one skilled in the art would not have found the invention feasible. However, I did not know this concept was called "teaching away" from the patent so thank you for this post-- it was very enlightening! Maybe in the future, expand more on the patent you listed as an example above?
Hi Srushti,
ReplyDeletePredictability is quite an interesting perspective on analyzing a patent's obviousness and the history as well. I wonder how high of consideration this is taken into account when federal circuits determine the level of obviousness but it's cool that it's taken into consideration at all. Do you think companies could maybe take advantage of these things?