Thinking Economically about Blocking Patents: Did Acorda Create a New Paradigm?

AuthorDeForest McDuff, Noah Brennan, Mickey Ferri
Pages42-45
Published in Landslide® magazine, Volume 12, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Thinking
Economically
about Blocking
Patents
Did Acorda Create
a New Paradigm?
By DeForest McDu, Noah Brennan, and Mickey Ferri
M
uch attention has been given to the recent
Federal Circuit opinion in the Acorda case
and the so-called “blocking-patent doc-
trine” that it may have created.1 There has
been notable dissent from some entities in
the pharmaceutical industry, arguing that innovation will be
deterred by the new precedent. For example, one brief claimed
that the ruling “devalues pharmaceutical innovation,2 and
another argued that the ruling “is impossible to reconcile with
[U.S. Supreme Court law on secondary considerations as] an
essential component of the obviousness inquiry.3 Thus, those
who care about secondary considerations might reasonably
ask: Did Acorda create a new paradigm for blocking patents?
Far from creating a new paradigm, however, Acorda rein-
forces and strengthens prior Federal Circuit opinions, and
further claries the economic foundations on which secondary
considerations and blocking patents rest. Importantly, Acorda
provides guidance on how to evaluate economic incentives for
innovation in light of economic disincentives from sequential
patenting, which are common in the pharmaceutical indus-
try and in innovation more broadly. Overall, Acorda reinforces
existing case law and emphasizes thoughtful economic analy-
sis of the case-specic facts for secondary considerations like
commercial success, long-felt need, and others.
This article reviews the economic foundations of second-
ary considerations and blocking patents, and examines how
practitioners might analyze blocking patents in light of Fed-
eral Circuit guidance in Acorda. It concludes by proposing
a useful terminology called the “Acorda factors” to describe
certain economic factors outlined in the Acorda case.
Economic Foundations of Secondary Considerations
Secondary considerations are so-called objective indicia that
a patent owner may attempt to rely on to support an argument
of nonobviousness of a claimed subject matter. Secondary
considerations bring objective information to an obviousness
analysis that may otherwise be inuenced by developments
subsequent to a claimed invention; that is, where an innova-
tion might appear to be obvious from the perspective of the
present day, secondary considerations can provide contextual
evidence showing why the alleged invention might not have
been obvious around the time of the development. Second-
ary considerations include commercial success, long-felt but
unsolved need, failure of others, and other factors.4
Several secondary considerations are based on the idea
that others in the market would have developed a product or
technology sooner had it been obvious. Commercial success
specically addresses this concept, with courts explaining that
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