QJ 54.1 - Mending the Fence: Commercial Success & the Blocking Patent Defense in Pharmaceutical Litigation

MENDING THE FENCE: COMMERCIAL SUCCESS & THE BLOCKING PATENT DEFENSE IN PHARMACEUTICAL LITIGATION

Commercial success often is a crucial after-the-fact consideration in litigations assessing whether a patent was nonobvious or not. Its evaluation usually entails assessing whether a patented invention (often, product) has achieved success in the marketplace and whether that success is due to the patented features. In pharmaceutical litigation, the blocking patent defense increasingly has been invoked to counter a patent owner's reliance on a showing of commercial success. The core blocking patent argument is that the success of the patented invention stems not from the at-issue patent being considered for obviousness, but instead from the preclusive effect of an earlier, pre-existing "blocking" patent that prevented third parties from pursuing inventions that led to the at-issue patent. The blocking patent defense appears to be increasingly invoked, and much of the time, has succeeded. Despite its growing use and acceptance, the foundations (or footers) of the blocking patent defense are less solid than they may seem. While commercial success is valuable in a nonobviousness analysis because it is intended to be rooted in real-world evidence, courts often discount this evidence in the context of a blocking patent defense and instead base their conclusions solely on an expert's opinion that blocking may have occurred. This approach risks undervaluing certain patented inventions by relying on speculative assertions that a blocking patent deterred others, even when real world evidence suggests otherwise-namely, that the blocking patent did not block competitive R&D, and that the patented invention succeeded because it was genuinely innovative and nonobvious.