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ARTICLE · 05 SEPTEMBER 2022

Obviousness: Cannot Forget The Motivation To Combine Or Modify

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Tris asserted claims of all three patents against Actavis Laboratories FL, Inc. in the U.S. District Court for the District of Delaware.

United StatesIntellectual Property
Melanie Magdun
Melanie Magdun
Adriana Burgy
Adriana Burgy
Stacy Lewis
Stacy Lewis
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Holding:

In Tris Pharma Inc. v. Actavis Laboratories FL, Inc., No. 21-1495 (Fed. Cir. July 7, 2022) (non-precedential), the Court of Appeals for the Federal Circuit ("Federal Circuit") affirmed the district court's holding that Actavis failed to show that the challenged claims would have been obvious.

Background:

Tris Pharma, Inc. ("Tris") owns U.S. Patent Nos. 8,465,765 ("the '765 patent"), 8,563,033 ("the '033 patent"), and 8,778,390 ("the '390 patent"), which have claims related to a liquid methylphenidate ("MPH") oral suspension with certain pharmacodynamic and pharmacokinetic properties. MPH is used to treat attention deficit hyperactivity disorder.

Tris asserted claims of all three patents against Actavis Laboratories FL, Inc. ("Actavis") in the U.S. District Court for the District of Delaware. The district court judge held that all asserted claims would have been obvious under 35 U.S.C. § 103. Tris Pharma, Inc. v. Actavis Lab'ys FL, Inc., 276 F.

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