Merck & CIE, et al. v. Watson Laboratories, Inc., C.A. Nos. 13-978 – RGA; Merck & CIE, et al. v. Watson Laboratories, Inc., C.A. No. 13-1272 - RGA, August 31, 2015.

Andrews, J.  Findings of fact and conclusions of law upholding validity of plaintiff’s patent.

The defendant sought to engage in the commercial exploitation of generic versions of Safyral® and Beyaz®, which are covered by plaintiff’s U.S. Patent No. 6,441,168 (the ‘168 patent).  The parties stipulated to infringement of the ‘168 patent if the Court found the patent valid.  On May 18 through May 21, 2015, the Court held an invalidity bench trial.  Defendant maintained that the ‘168 patent is invalid (a) under the on-sale bar of §102(b), as anticipated under §102(a), for lack of written description under §112, and/or as obvious under §103.  The Court disagreed.  Defendant did not prove that there was an invalidating commercial sale.  The asserted prior art patent did not anticipate as the structures are different and the experiment conducted did not follow the prior art procedure alleged to inherently anticipate.  Defendant’s written description defense is unpersuasive since a specification is not required to describe each and every embodiment of the claim.  Finally, the asserted claim is not obvious as defendant did not demonstrate that a person of ordinary skill in the art would have a reasonable expectation of success in producing the claimed compound when combining the prior art.