Astellas had argued that the phrase didn’t necessitate demonstrating that the medication reduced food’s impact on absorption. However, the judge concluded that it did require at least “some” reduction. Hence, Astellas’ invention was not considered obvious, making it unlikely that other scientists aiming to diminish food’s impact on similar medications would have arrived at the same product.
Judge Mellor’s rationale was that, even if undergraduate students could have theoretically worked on such a project part-time for a few weeks, there were only three identifiable routes to success, all of which would likely have led to abandonment by students or research teams.
The first route was flawed as it relied purely on hindsight. The second demanded “significant imagination” and the unlikely rejection of a vital piece of information. The third route would have forced any researcher to deviate entirely from conventional practice, which was deemed improbable.
However, Judge Mellor conceded that the patent would be invalidated if her interpretation of the phrase was incorrect.
