Throwing Metaphorical Darts: When Is Obvious To Try Not So Obvious?

Addressing whether a patented claim for a formulation was obvious to try, the district court on a motion for summary judgment held that the claim was nonobvious where several prior art references resulted in numerous approaches to a problem and was thus less "obvious to try." Valeant Pharm. Int'l Inc. v. Mylan Pharm. Inc., Case No. 15-8180, 2018 (D.N.J., May 1, 2018) (Chesler, J).

Valeant Pharmaceuticals International, Inc., and Wyeth LLC (collectively, plaintiffs) owned US Patent No. 8,552,025, which covers Valeant's drug Relistor (methylnaltrexone). Several generic drug makers (defendants) sought to make and sell a generic version of Relistor prior to the expiration of the relevant patents, and this Hatch-Waxman suit was initiated.