Amarin Corp Plc (AMRN)

[IgnoranceIsBliss]

TRYING THIS ONE MORE TIME -- Important question for the lawyers on the board:

I continue to review all this stuff, and I'm trying to figure out what will be the thrust of the defendants' retort. It strikes me that perhaps their strongest argument is one that Du harped on in her ruling -- the fact that the examiner saw prima facie obviousness due to Mori in deliberations over patent eligibility. Singer addresses this in his brief as follows:

Finally, the district court’s citation of the examiner’s initial finding of obviousness that the applicants later overcame was also legal error. (Appx59***; Appx57815–57822.) Almost every patent ever allowed was once rejected by an examiner. That the examiner initially found a prima facie case to use EPA to lower triglycerides in severe hypertriglyceridemia patients during prosecution does not provide any evidence, let alone clear and convincing evidence, to show obviousness after the patent has issued, and is presumed valid. See 35 U.S.C. § 282; Quad Envtl. Techs. Corp. v. Unions Sanitary Dist., 946 F.2d 870, 876 (Fed. Cir. 1991) (emphasizing that obviousness determinations are made by the courts “without deference to the rulings of the patent examiner”).

The case Singer cites is here: https://casetext.com/case/quad-envtl-tech-v-union-sanitary-dist

I read it, and it is relevant precedent as it deals with obviousness and statements made by the patentee on obviousness during the patenting process.

But the question is: How relevant is the precedent, and how far does it go to countering Du's citation of the examiner's prima facie obviousness stance due to Mori? My reading was that it was appropriate for Du to cite it, but not appropriate to place undue weight on it. The burden is supposed to shift in favor of the patentee after the patent is issued, and the matter is supposed to be reviewed de novo by the district court, reflecting the shift of burden in favor of the patentee.

But I'm not an attorney. Could the board attorneys have a look at this and see what they think?

Many thanks,
TTE