Amarin Corp Plc (AMRN)

[HDGabor]

j-

The SC's did not help prove differently EVEN THOUGHT THEY WERE WEIGHED AGAINST EACH OTHER AS IN OUR CASE

Meanwhile the "same issues" exist in the case (as in our case) I do not see too much similarity.

(i) weighting secondary consideration

The DC Judge weighted the SCs as strong, weak or "is simply not enough to weigh in BMS' s favor as to this factor regarding nonobviousness" but did not against each other, did not determined that any "secondary
considerations weigh in Defendants’ favor" or "secondary considerations are outweighed by the fact that the Court found Plaintiffs’ other proffered secondary considerations favor Defendants"

(ii) where “the PTO did not have all material facts before it, its considered judgment may lose significant force,” and courts should “consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.” Id. at 111; see also Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379 (Fed. Cir. 2005) (finding reversible error where “district court failed to appreciate that the prosecution history of the relevant patents, while not establishing inequitable conduct, casts some doubt on the final examiner’s conclusion that the claimed [invention] produces unexpected results sufficient to overcome a prima facie case of obviousness.”).

Meanwhile, the " Court finds in favor of BMS with respect to inequitable conduct, finding that Teva has not met its burden to prove that certain then-BMS employees committed inequitable conduct before the PTO regarding the application that led to the issuance of the '244 Patent." the 2'-CDG (=Kurabayashi) prior art was not cited to the PTO by BMS ... Kurabayashi was ... (The district court noted that because the prior art at issue had been before the examiner during prosecution, the burden of proving the challenged claims obvious "is particularly high." Syntex (U.S.A.) LLC v. Apotex, Inc., No. 01-CV-2214, slip op. at 40, (Dec. 29, 2003).)

MEMORANDUM OPINION

Best,
G