July 2, 2017

Reasonable Expectation of Success, Not Absolute Predictability, is All that is Required for Obviousness

By Bryan K. Wheelock, Principal

In Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., [16-1814] (July 26, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision under inter partes reexamination that claims in U.S. Patent Nos. 8,124,072; 8,105,583; and 8,147,826, directed to CoQ10 in solvents known as monoterpenes, were invalid for obviousness.

In trying to resurrect its claims, Soft Gel pointed to a later article reflecting follow up research, the necessity of which, it argued showed that earlier references did not make the claimed invention obvious.  The Federal Circuit called Soft Gel out, stating that it showed that Soft Gel was applying an incorrect legal standard for obviousness, requiring “absolute predictability” rather than simply “a reasonable expectation of success.”  The Federal Circuit said:

A supplemental study does not imply lack of awareness of the likely result; rather, studies are frequently conducted to confirm what is suspected to be true. An incentive to conduct a confirmatory study frequently exists even when one has every reason to expect success.