By: Daniel A. Geselowitz, Ph.D.
The U.S. Supreme Court case of KSR Int’l Co. v. Teleflex Inc. has made it easier for an Examiner to combine references and harder for an applicant to argue against an obviousness rejection. However, it is possible to argue that there is no reason to combine references, as illustrated by the recent U.S. Court of Appeals for the Federal Circuit’s decision in Purdue Pharma L.P. v. Depomed, Inc., decided on March 24, 2016, in which Depomed’s two patents survived three inter partes reviews (IPRs) and appeals to the Federal Circuit.
Depomed owns two related U.S. patents directed to a controlled-release oral dosage form of a soluble drug. Depomed sued Purdue for infringement; and Purdue then filed three petitions at the U.S. PTO requesting the IPRs on the grounds that the claims were obvious, in particular, over a “Baveja” reference and a Shell” reference. A representative claim is as follows:
- Claim 1 of the ‘802 patent recites as follows:
- 1. A controlled-release oral drug dosage form for releasing a drug whose solubility in water is greater than one part by weight of said drug in ten parts by weight of water,