“The Federal Circuit’s Wake-Up Call After Its Decision in Kubin: Biotech and Pharma Patents Not Immune to ‘Obvious to Try’”

Since the Supreme Court’s 2007 decision in KSR, district courts and the Federal Circuit have struggled to define KSR’s applicability to more ‘‘unpredictable’’ arts such as biotechnology and chemistry.  Litigators and patent practitioners have waited anxiously for some guidance from the Federal Circuit as to how best to advise their clients with respect to this ever-changing landscape of the obviousness analysis.  The April 3 Federal Circuit decision, In re Kubin, may finally provide some clarity concerning the obviousness analysis in the biotechnology and chemical arts. The Kubin court seems to have put to rest the debate in the post-KSR case law over ‘‘obvious to try’’ and whether that doctrine should carry any weight in determining the obviousness of inventions in more unpredictable arts. This article provides an overview of the tension between the less ‘‘predictable’’ arts and the obviousness analysis since KSR, and discusses the Kubin decision and its effects on how practitioners should advise their clients.

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