As to Patent Owner’s argument that “Petitioner failed to establish a motivation due to ... its reliance on speculation and conjecture (‘likely’),” the Decision explains why, “[a]t this stage of the proceeding, we find Petitioner has provided sufficient evidence, in the form of declaration testimony and prior art references, to support its position that a skilled artisan would reasonably have expected that replacing hydrogen with deuterium at C20 of a retinoid in the A2E biosynthetic pathway will retard the accumulation of A2E,” which is part of Petitioner’s stated reason for combining the asserted references.
In particular, although we agree with the general proposition that motivation and expectation of success are separate requirements of obviousness, see, e.g., Eli Lilly & Co. v. Teva Pharms Int’l GmbH, 8 F.4th 1331, 1344 (Fed. Cir. 2021), in this case they are intertwined.
In that case, the district court found, and the Federal Circuit agreed, that “on a purely mechanical level,” an ordinarily skilled artisan would have had a reasonable expectation of success of manufacturing the claimed extended release formulation once motivated to use the recited active ingredient.
Addressing this argument, the Federal Circuit determined that “[t]he issues ... reduce essentially to whether one of ordinary skill in the art ... would have had a reasonable expectation that [the recited active ingredient] would be colonically absorbed and therefore would have been motivated to produce the claimed extended release formulation.” Id. at 1293–1294 (emphasis added).
The Federal Circuit found no clear error in the district court’s factual findings that the evidence sufficiently showed an ordinarily skilled artisan “would ... have perceived a reasonable likelihood of success and ... been motivated to combine prior art to make the claimed invention.” Id. at 1295.