Replies to post #6657 on Momenta Pharmaceuticals, Inc. (MNTA)

[mouton29]

The case at this point shouldn't deal with the validity of the patents.

Why not? To prevail and get a preliminary injunction, MNTA has to show that it is likely that they will prevail on the merits. If Amphastar can convince the judge that the MNTA patents are invalid for obviousness or otherwise, seems to me that the judge cannot issue a preliminary injunction.

[investorgold2002]

jb- "The case at this point shouldn't deal with the validity of the patents. That's next"

http://patentdocs.typepad.com/files/graceway-1.pdf

there are some parallels

in both cases, defendants heavily relied on "obviousness" defense

in both cases, during patent prosecution claims received "rejection letter" on grounds of obviousness based on prior art , before they finally got allowance

please read page 6,7,8 and 9

BEGIN QUOTE
burdens at trial, importantly the ultimate question before the trial court is
different. As this court explained in New England Braiding Co. v. A.W.
Chesterton Co., the trial court “does not resolve the validity question, but
rather must ... make an assessment of the persuasiveness of the challenger’s
evidence, recognizing that it is doing so without all evidence that may come
out at trial.” 970 F.2d 878, 882-83 (Fed. Cir. 1992). Instead of the alleged
infringer having to persuade the trial court that the patent is invalid, at this
stage it is the patentee, the movant, who must persuade the court that, despite
the challenge presented to validity, the patentee nevertheless is likely to
succeed at trial on the validity issue.
...
Thus, when analyzing the likelihood of success factor, the trial court,
after considering all the evidence available at this early stage of the litigation,
must determine whether it is more likely than not that the challenger will be
able to prove at trial, by clear and convincing evidence, that the patent is
invalid. We reiterate that the “clear and convincing” standard regarding the
challenger’s evidence applies only at trial on the merits, not at the preliminary
injunction stage. The fact that, at trial on the merits, the proof of invalidity will
require clear and convincing evidence is a consideration for the judge to take
into account in assessing the challenger’s case at the preliminary injunction
stage; it is not an evidentiary burden to be met preliminarily by the challenger.
Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1377, 1379-80 (Fed. Cir. 2009)
(emphasis added).
As explained in greater detail below, Plaintiffs are not likely to succeed on the merits
because Nycomed has shown a substantial question regarding the validity of the ‘672 Patent
due to obviousness. A claimed invention including a combination of elements is not
patentable if it differs from the prior art in a manner “such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having ordinary
skill in the art.” 35 U.S.C. § 103(a); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.
Cir. 2007). Once a patent examiner has concluded that the combination of elements is
6
Case 2:10-cv-00937-WJM -MF Document 136 Filed 06/10/10 Page 6 of 17
obvious, that is, once the patent examiner makes a finding in regard to the prima facie case,
the applicant may rebut this presumption with evidence of unexpected results. However, such
evidence is only a part of the “totality of the evidence” considered in reaching the ultimate
conclusion of obviousness

END QUOTE