Orexo AB et al v. Actavis Elizabeth LLC, C.A. No. 14-829-SLR, November 15, 2016.

Robinson, J. Findings of fact and conclusions of law following bench trial finding that the asserted claims of one patent are not obvious, the asserted claims of a second patent are obvious, and defendant infringes the valid patent.

The disputed product relates to buprenorphine. With respect the validity of the first patent, the parties dispute whether the prior art discloses sublingual administration.  

The court finds that defendant has not carried its burden to prove that a person of ordinary skill would be motivated to use competing prior art teachings to arrive at the combination in the patent-in-suit.  As for the second patent-in-suit, defendant demonstrated by clear and convincing evidence a motivation to combine and a reasonable expectation of success. Finally, the court finds at least circumstantial evidence of infringement despite questionable laboratory documentation of testing.