An inventor’s own motivations (e.g., as expressed in a patent application) are generally irrelevant to the obviousness analysis. “Patentability does not turn on how the invention was made, but on whether it would have been obvious to a person of ordinary skill in the field.”
Background / Facts: The patent being asserted here in response to a generic drug ANDA submission is directed to the antihypertension drug having the brand name Tarka®. The Tarka® product is a combination of two hypertension medications, including an angiotensin-converting enzyme (ACE) inhibitor with a calcium antagonist, but substitutes the typical class of ACE inhibitors based on a “single-ring” compound with another class based on a “double-ring” compound, where the prior art had studied primarily single-ring compounds.
Issue(s): Whether the inventors’ selection of the double-ring ACE inhibitors for testing in combination with calcium antagonists is of itself evidence that it was obvious to try this combination.
Holding(s): No. “Patentable invention does not require that inventors work from ignorance. Technologic advance flows from knowledge, experience, insight—perhaps hunch or curiosity. Patentability does not turn on how the invention was made, but on whether it would have been obvious to a person of ordinary skill in the field.” Thus, in this case, “[t]he jury could reasonably have relied on the testimony of the [patentee’s] expert, that persons skilled in the art in 1986 would not have predicted the longer-lasting hypertension control demonstrated by the double-ring structures of quinapril and trandolapril in combination with calcium antagonists, because of the widespread belief that double-ring inhibitors would not fit the pocket structure of the ACE.”