Process Discoverable By "Merely Ordinary Experimentation" Rendered Obvious

In Merck Sharp & Dohme Corp. v. Hospira, Inc., No. 2017-1115 (Fed. Cir. Oct. 26, 2017), a divided Federal Circuit panel affirmed the district court's finding that a claimed process for making a chemical compound was obvious. Merck sued Hospira alleging infringement of U.S. Patent Nos. 6,486,150 and 5,952,323 after Hospira filed an ANDA for a generic version of Merck's Invanz® product. After a bench trial the district court found the '323 patent infringed and not invalid and the '150 patent invalid as obvious because the claimed steps could have been discovered by routine experimentation. Merck appealed the invalidity finding.

On appeal, the panel majority affirmed, holding that the claimed process recited "experimental details that one of ordinary skill would have utilized via routine experimentation, armed with the principles disclosed in the prior art." Specifically, the majority found that the claimed "solution" was "nothing more than conventional manufacturing