Federal Circuit Splits On Approach To Analyzing Graham Factors

In Merck Sharp & Dohme Corp. v. Hospira, Inc.,¹ the Federal Circuit affirmed the lower court's ruling that the asserted claims of Merck's U.S. Patent No. 6,486,150 (the '150 patent) were obvious despite evidence of commercial success and copying by others. Concerned that the majority's opinion constituted a shortcut around a proper Graham analysis, Judge Newman dissented and highlighted the court's inconsistent application of secondary considerations of nonobviousness in the context of establishing a prima facie case of obviousness. The decision is also noteworthy for its clarification of the so-called blocking patent and the effect of such a patent on evidence of commercial success.