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Blocking Patents: A Patent Cannot Block Itself

Holding

In Chemours Company FC, LLC v. Daikin Industries, Ltd., Nos. 20-1289, -1290 (Fed. Cir. July 22, 2021), a CAFC panel held that the PTAB (“Board”) erred by finding the very patent at issue in an IPR to be a “blocking patent” and that the proffered sales evidence of commercial success was therefore “weak.”

Background

A “blocking patent” is an earlier U.S. patent that prevents practice of a later invention. In some instances, the CAFC has found that such prior blocking patents may reduce the weight given to objective indicia of nonobviousness, such as failure of others, long-felt but unmet need, and commercial success. The rationale is that the existence of the prior blocking patent may have dissuaded or legally barred competitors from commercializing the purportedly obvious idea, thus rendering weak the normal inference of nonobviousness resulting from such objective indicia. See, e.g., Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310 (Fed. Cir. 2018); Sanofi-Aventis Deutschland GMBH v. Mylan Pharms. Inc., 791 Fed. Appx. 916 (Fed. Cir. 2019); and Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731 (Fed. Cir. 2013).

In Chemours, the Board evaluated the obviousness of Chemours’ patent, including sales evidence proffered by Chemours for its commercial polymer FEP 9494 covered by the patent. The Board determined Chemours evidence of commercial success was weak because it concluded that the existence of the patent covering its FEP 9494 product was a blocking patent that would have precluded others from freely entering the market. Chemours, at *16.

Federal Circuit Decision

The CAFC reversed, finding the Board erred by misapplying the “blocking patent” doctrine to the patent at issue itself. Id. The CAFC explained that “[a] blocking patent is one that is in place before the claimed invention because ’such a blocking patent may deter non-owners and non-licensees from investing the resources needed to make, develop, and market such a later, ‘blocked’ invention.’” Id. In view of this explanation, the CAFC concluded that “the challenged patent, which covers the claimed invention at issue, cannot act as a blocking patent.” Id. at *16-17.

Take Aways

The burden of showing obviousness is on the examiner during prosecution, on the petitioner in an AIA Post Grant Proceeding  and on the challenger in district court litigation. MPEP §2142; Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346 (Fed. Cir. 2013). Patent owners may have strong commercial success arguments as to why that burden has not been met, as in the Chemours case where the blocking patent doctrine was being misapplied. Of course, the patent owner would have to overcome attacks that there is no nexus between the merits of the claimed invention and that the commercial success is not commensurate in scope with the claimed invention.  Chemours also dealt with those issues, and we shall deal with them in a separate post entitled “Objective Indicia: Nexus Analysis May Require Evaluation of Claims as a “Unique Combination”.  

Stacy Lewis, a law clerk at Finnegan, also contributed to this article.

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 232
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About this Author

Jeffrey A. Freeman IP Lawyer Finnegan Law Firm
Partner

Jeffrey Freeman enjoys a diverse practice focused on patent litigation, prosecution, and client counseling work, with particular experience in Hatch-Waxman litigation. He has successfully represented clients in a broad range of technologies, including pharmaceuticals, chemicals, pulp and paper, plastics, oil and gas, cosmetics, inorganic materials, and food and beverage compositions.

Jeff’s litigation practice includes U.S. district court litigation and appeals to the Federal Circuit, with extensive experience representing pharmaceutical patent...

404-653-6430
Thomas L. Irving Intellectual Property Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC
Partner

Tom Irving has some 45 years of experience in intellectual property law. His U.S. pharma practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, reissue, and reexamination. In addition to advising on procuring strong U.S. patents, Tom counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability, supplemental examination, and validity analysis. He has served as lead counsel in numerous patent interferences...

202-408-4082
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