Blocking Patents: Impact of Acorda Therapeutics on Obviousness Analysis

The Federal Circuit's recent decision in Acorda Therapeutics v. Roxane Laboratories (Sept. 10, 2018) expanded the doctrine of blocking patents. The court addressed whether a blocking patent can negate secondary considerations of non-obviousness beyond merely commercial success. The decision opens the door for generics to promote competing versions of Acorda's name brand drug. The doctrine may also impact licensing strategies in addition to obviousness analyses.

The court reasoned that a blocking patent diminishes possible rewards for a non-owner's or non-licensee's investment in research aimed at an invention whose commercial exploitation would be infringing. The reduced incentives for innovation in the blocked space by non-owners and non-licensees of the blocking patent offer an alternative explanation for the patentee's commercial success or its ability to fill a long-felt need—an explanation that has nothing to do with non-obviousness. Participants will explore the impact of a blocking patent in obviousness analyses, licensing strategies, and validity searches.

Listen as our authoritative panel discusses the Acorda decision and the expansion of the doctrine of patent blocking. The panel will address commercial success, other secondary considerations, and how the decision impacts obviousness, cross-licenses and the use of invalidity/validity/opposition searches that can help remove blocking patents.

1. Acorda Therapeutics v. Roxane Labs. (Fed. Cir. 2018)
2. The expanded doctrine of patent blocking
3. Impact of expanded doctrine
   1. On obviousness analysis
   2. On the use of searches
   3. On cross-licensing

The panel will review these and other key issues:

• How does the Acorda decision change the playing field for blocking patents?
• What impact does the expanded doctrine of blocking patents have on the obviousness analysis?
• What steps can patent counsel take to overcome the notion of the hypothetical researcher whose concern about infringing on a prior patent would deter him/her from commercial success?