Patents and the Expectation of Success Doctrine

Description

Several recent Federal Circuit decisions have addressed the requirement for reasonable expectation of success in the obviousness context. Recent cases discuss the requirement and the degree of predictability required and demonstrate increased emphasis on a showing of obviousness increasingly relies on a showing of reasonable expectation of success.

The Federal Circuit's recent decision in OSI Pharmaceuticals v. Apotex (Fed. Cir. Oct. 4, 2019) highlighted the importance of a reasonable expectation of success in the obviousness analysis. In that case, the court held nonobvious a method of treating non-small cell lung cancer (NSCLC) using a known compound, where there was no efficacy data or other information regarding the compound’s effect on NSCLC and there was a high failure rate of other drugs for treatment of NSCLC. And, in Endo Pharmaceuticals Inc. v. Actavis L.L.C. (Fed. Cir. May 3, 2019), the Federal Circuit held that a prior art reference that discloses a goal but not an explanation of how to reach that goal does not provide a reasonable expectation of success. Moreover, in Allergan Sales L.L.C. v. Sandoz Inc., (Fed. Cir. Aug. 29, 2019), the Federal Circuit explained that a similar showing of expectation of success must be met for functional aspects of a claimed invention as well.

Listen as our authoritative panel of patent attorneys discusses recent Federal Circuit cases and potential implications of these cases. The panel will also examine the relationship between the requirement for reasonable expectation of success and enablement. The panel will offer best practices for patent drafting and patent prosecution in light of the recent case law.