United States Court of Appeals 

for the Federal Circuit ______________________ 

UCB, INC., UCB PHARMA GMBH, LTS LOHMANN 

THERAPIE-SYSTEME AG,

Plaintiffs-Appellants

v.

ACTAVIS LABORATORIES UT, INC.,

Defendant-Appellee

______________________ 

2021-1924

______________________ 

Appeal from the United States District Court for the 

District of Delaware in No. 1:19-cv-00474-KAJ, Circuit 

Judge Kent A. Jordan.

------------------------------------------------

UCB, INC., UCB PHARMA GMBH, LTS LOHMANN 

THERAPIE-SYSTEME AG,

Plaintiffs-Appellants

v.

MYLAN TECHNOLOGIES INC.,

Defendant-Appellee

______________________ 

2021-2336

______________________ 

Case: 21-1924 Document: 65 Page: 1 Filed: 04/12/2023
2 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

Appeal from the United States District Court for the 

District of Delaware in No. 2:19-cv-00128-cr, Circuit Judge 

Kent A. Jordan.

______________________ 

Decided: April 12, 2023

______________________ 

RICHARD L. RAINEY, Covington & Burling LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by BRIAN GERARD BIELUCH, GEORGE FRANK PAPPAS; 

MICHAEL E. BOWLUS, ALEXA HANSEN, San Francisco, CA; 

JACK B. BLUMENFELD, DEREK J. FAHNESTOCK, ANTHONY D.

RAUCCI, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; CATHERINE MCCORD, KEVIN MCGANN, SILVIA MEDINA, JAMES TRAINOR, Fenwick & West LLP, New York, 

NY.

 JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington, 

DC, argued for all defendants-appellees. Defendant-appellee Actavis Laboratories UT, Inc. also represented by WILLIAM H. BURGESS, TERA JO STONE; THOMAS FLEMING,

CHRISTOPHER T. JAGOE, New York, NY. 

 DEEPRO MUKERJEE, Katten Muchin Rosenman LLP, 

New York NY, for defendant-appellee Mylan Technologies 

Inc. Also represented by LANCE SODERSTROM; JITENDRA 

MALIK, Charlotte, NC; JILLIAN SCHURR, Chicago, IL; ERIC 

THOMAS WERLINGER, Washington, DC. 

 ______________________ 

Before MOORE, Chief Judge, CHEN and STOLL, Circuit 

Judges. 

STOLL, Circuit Judge. 

This appeal concerns the validity of U.S. Patent 

No. 10,130,589, directed to transdermal rotigotine patches 

and asserted by UCB, Inc., UCB Pharma GmbH, and LTH 

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UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 3

Lohman Therapie-Systeme AG (collectively, “UCB”) in 

Hatch-Waxman proceedings. UCB sued Actavis Laboratories UT, Inc. (“Actavis”) for infringement based on Actavis’s 

filing of an Abbreviated New Drug Application. The United 

States District Court for the District of Delaware found the 

asserted claims of the ’589 patent invalid for anticipation 

and obviousness. Because the district court’s fact findings 

on overlapping ranges, teaching away, unexpected results, 

and commercial success are not clearly erroneous, we affirm the judgment of invalidity. 

BACKGROUND

I 

The drug at issue in this pharmaceutical case is rotigotine, which is used to treat Parkinson’s disease. Parkinson’s disease is a neurodegenerative disorder that is 

presently estimated to affect more than a million Americans. Parkinson’s disease impacts motor control and 

causes significant gastrointestinal dysfunction, such as 

“difficulty swallowing, delayed gastric emptying, and slow 

transit times through intestines,” symptoms that can frustrate oral treatments. J.A. 6488–89, ¶ 81. 

The technology at issue relates to transdermal therapeutic systems (TTSs), which deliver drugs through the patient’s skin and thus avoid complications with oral 

treatments. TTSs are usually implemented as skin 

patches that deliver drugs across the patient’s skin barrier 

to enter the patient’s bloodstream. These patches contain 

drugs in an “amorphous,” i.e., non-crystalline, form because drugs in crystalline form cannot cross the skin barrier. Consequently, crystallization in patches can reduce 

the amount of drug leaving the patch and hence reduce a 

patient’s dose.

Amorphous materials can transition from a non-crystallized (high energy) state to a crystallized (lower energy) 

state. “[T]he temperature at which an amorphous solid 

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4 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

changes from a rigid state to a flexible, rubbery state” is 

the glass transition temperature (Tg). UCB, Inc. v. Actavis 

Lab’ys UT, Inc., No. CV 19-474, 2021 WL 1880993, at *7, 

¶ 44 (D. Del. Mar. 26, 2021) (UCB II). Above Tg, molecules 

are more mobile and more likely to crystalize. 

In 2007, UCB invented and marketed Neupro® (which 

we refer to as original Neupro®), the first U.S. Food and 

Drug Administration approved patch for treatment of Parkinson’s disease. Original Neupro® contains a dispersion 

of amorphous rotigotine and polyvinylpyrrolidone (PVP). 

PVP stabilizes amorphous rotigotine by increasing the Tg 

and preventing hydrogen bonding between rotigotine molecules, which prevents a clumping of sorts that creates 

crystallization. See id. at *7, ¶¶ 44, 46. Significant to this 

appeal, original Neupro® contains a weight ratio of rotigotine to PVP of 9:2. Id. at *8, ¶ 57. 

Original Neupro® is covered by several UCB patents, 

including U.S. Patent Nos. 6,884,434 and 7,413,747 (the 

Muller patents). The Muller patents have materially similar specifications and claim priority to an application filed 

in 1999. The ’434 Muller patent teaches a TTS having rotigotine in an amount effective for treating Parkinson’s disease, with PVP in the range of 1.5% to 5% (w/w). See 

’434 Muller patent, col. 7 ll. 55–67, col. 8 ll. 17–22, col. 8 

ll. 54–63 (claims 1, 5, 14–15). The ’747 Muller patent 

teaches a TTS with a ratio of 9% rotigotine to 1.5% to 5% 

PVP by weight. ’747 Muller patent, col. 8 l. 66–col. 10 l. 4 

(claim 14). The Muller patents also describe an exemplary 

process for making a TTS with a rotigotine to PVP weight 

ratio of 9:3 rotigotine to PVP. ’434 Muller patent, col. 5 

l. 54–col. 6 l. 14 (Example 2); ’747 Muller patent, col. 6 

ll. 16–44 (Example 2). 

II

In August 2007, some three months after the original 

Neupro® U.S. launch, it was discovered that a new crystalline form of rotigotine—“Form II”—occurred when 

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UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 5

rotigotine was stored at room temperature. After discussions with the FDA, UCB recalled original Neupro® from 

U.S. markets in April 2008. Original Neupro® remained in 

limited use in the U.S. under a compassionate-use program, while European regulators agreed to continue marketing original Neupro® under cold-chain conditions (i.e., 

refrigerating original Neupro®), which prevents Form II 

crystallization. 

In 2012, the FDA approved a new version of Neupro®

(reformulated Neupro®), which employs a weight ratio of 

9:4 rotigotine to PVP. The reformulated Neupro® exhibits 

long-term stability at room temperature with a two-year 

shelf-life. Reformulated Neupro® is bioequivalent to the 

original Neupro®, and the FDA approved it without new efficacy studies. The Muller patents are listed in the FDA’s 

publication “Approved Drug Products with Therapeutic 

Equivalence Evaluations,” commonly known as the Orange 

Book, as covering reformulated Neupro®. 

In 2013, Actavis submitted an Abbreviated New Drug 

Application (ANDA) to the FDA for approval of a generic 

version of a transdermal rotigotine patch. In 2014, UCB 

filed suit for infringement of the ’434 Muller patent and 

U.S. Patent No. 8,232,414. See UCB, Inc. v. Watson Lab’ys, 

Inc., No. CV 14-1083, 2017 WL 11646645, at *1 (D. Del. 

Nov. 14, 2017), aff’d, 927 F.3d 1272 (Fed. Cir. 2019) (UCB 

I).1 The district court upheld the validity of the challenged 

claims of the ’434 Muller patent, held some of the challenged claims of the ’414 patent invalid under 35 U.S.C. 

§ 102(a), and granted UCB an injunction preventing 

1 Watson Laboratories, Inc. was the named defendant in the original suit, but Actavis (formally known as 

Watson) became the defendant. See UCB II, 2021 WL 

1880993, at *1 n.1.

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6 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

approval of Actavis’s ANDA. The injunction expired in 

March 2021, when the ’434 Muller patent expired. 

In 2018—while UCB I was on appeal—UCB filed the 

patent application that matured into the patent-in-suit, 

the ’589 patent. The ’589 patent claims priority from a provisional application filed in December 2009. The patent is 

entitled “Polyvinylpyrrolidone for the Stabilization of a 

Solid Dispersion of the Non-Crystalline Form of Rotigotine” and discusses both rotigotine Form I and Form II. See

’589 patent, col. 1 ll. 47–54, col. 11 l. 66–col. 12 l. 2. The 

written description explains that “PVP is unexpectedly 

able to stabilize the non-crystalline form of rotigotine and 

prevent rotigotine from re-crystallization in a solid dispersion . . . thereby imparting sufficient long term storage stability properties to the [TTS], preferably at room 

temperature.” Id. at col. 3 ll. 28–35. The ’589 patent discloses and claims a TTS having a range of rotigotine to PVP 

ratios by weight of about 9:4 to about 9:6. Claim 1 is representative: 

1. A method for stabilizing rotigotine, the method 

comprising providing a solid dispersion comprising 

polyvinylpyrrolidone and a non-crystalline form of 

rotigotine free base, wherein the weight ratio of rotigotine free base to polyvinylpyrrolidone is in a 

range from about 9:4 to about 9:6.

Id. at col. 15 ll. 54–59. The ’589 patent’s Table 3, shown 

below, displays results of storage stability testing of samples of rotigotine to PVP ratios ranging from 9:1 to 9:11. 

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Id. at Tbl. 3. The patent explains that no crystals were observed at room temperature for up to 24 months for sample 

5 with the PVP to rotigotine weight ratio of 9:4. Id.

at col. 15 ll. 17–19. 

A comparison of the Muller patents, the ’589 patent, 

and original and reformulated Neupro® is depicted below. 

As shown, the ranges of rotigotine to PVP ratios disclosed 

in the Muller patents and the ’589 patent overlap from 

about 9:4 to 9:5 and include the ratio in reformulated 

Neupro®. 

III

In March 2019, about a year before UCB’s injunction 

expired, UCB again filed a lawsuit against Actavis, accusing Actavis’s same ANDA of infringement. This time, UCB 

asserted the ’589 patent, which would delay FDA approval 

of a generic for nine additional years, until the ’589 patent 

Case: 21-1924 Document: 65 Page: 7 Filed: 04/12/2023
8 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

expires in December 2030. UCB asserted that Actavis infringed claims 1–3, 7, and 10–12 of the ’589 patent. Actavis 

conceded that, if the ’589 patent is valid, then its ANDA 

would infringe. 

In July 2019, in response to Mylan Technologies, Inc. 

seeking to market its own generic version of Neupro®, UCB 

also filed a lawsuit against Mylan alleging infringement of 

the ’589 patent and U.S. Patent No. 10,350,174. UCB, Inc. 

v. Mylan Techs., Inc., No. 2:19-CV-128, 2020 WL 2300359, 

at *1 (D. Vt. May 8, 2020). The parties stipulated to adopt, 

and the Vermont district court adopted, the Delaware judgment, opinion, and trial record. J.A. 67–69. This appeal 

consolidates both cases. 

In March 2021, the month UCB’s injunction expired, 

the district court ruled on Actavis’s invalidity defenses. 

Applying the “at once envisage” framework for anticipation 

articulated in Kennametal, Inc. v. Ingersoll Cutting Tool 

Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), the district court 

found that the Muller patents anticipate all asserted 

claims. UCB II, 2021 WL 1880993, at *20–22. Separately, 

the district court held that the asserted claims would have 

been obvious in view of multiple prior art references, including the Muller patents. Id. at *23–27. 

UCB appeals the district court’s anticipation and obviousness determinations. We have jurisdiction under

28 U.S.C. § 1295(a)(1). 

DISCUSSION

On appeal, UCB argues that the district court erred in 

its anticipation analysis because, contrary to our precedent, it applied Kennametal to an overlapping ranges case. 

Appellant’s Br. 36–39. UCB also argues that the district 

court’s obviousness analysis is incorrect because, broadly,

the district court (1) impermissibly relied on hindsight in 

its analysis; and (2) improperly disregarded evidence of 

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objective indicia of nonobviousness. See Appellant’s 

Br. 49–73. We address anticipation first, followed by obviousness. 

I 

We start with anticipation. UCB argues that the district court committed legal error by applying the wrong 

law—Kennametal and the “immediately envisage” line of 

cases—in its anticipation analysis. We agree. 

To anticipate a claim, a single “prior art reference must 

disclose each and every element” recited in the claim. 

Adasa Inc. v. Avery Dennison Corp., 55 F.4th 900, 910 

(Fed. Cir. 2022). Whether a prior art reference anticipates 

a claim is a question of fact. Atofina v. Great Lakes Chem. 

Corp., 441 F.3d 991, 995 (Fed. Cir. 2006). Questions of fact 

decided by the district court are reviewed for clear error. 

Id. “A finding is ‘clearly erroneous’ when although there is 

evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a 

mistake has been committed.” United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948). A court’s application of 

an improper standard to fact “may be corrected as a matter 

of law.” United States v. Singer Mfg. Co., 374 U.S. 174, 194 

n.9 (1963); see also Walther v. Sec’y of Health & Hum. 

Servs., 485 F.3d 1146, 1152 (Fed. Cir. 2007). 

Our precedent sets forth an established framework for 

analyzing whether a prior art reference anticipates a 

claimed range. The framework varies depending on 

whether the prior art discloses a point within the claimed 

range or discloses its own range that overlaps with the 

claimed range. If the prior art discloses a point within the 

claimed range, the prior art anticipates the claim. See 

Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865, 869 

(Fed. Cir. 2015) (citing Titanium Metals Corp. v. Banner, 

778 F.2d 775, 782 (Fed. Cir. 1985)). On the other hand, if 

the prior art discloses an overlapping range, the prior art 

anticipates the claimed range “only [] if it describes the 

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10 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

claimed range with sufficient specificity such that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the 

ranges.” Id. (citing Atofina, 441 F.3d at 999; ClearValue, 

Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1345 

(Fed. Cir. 2012)). In other words, “[o]nce the patent challenger has established, through overlapping ranges, its 

prima facie case of anticipation, ‘the court must evaluate 

whether the patentee has established that the claimed 

range is critical to the operability of the claimed invention.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1338 

(Fed. Cir. 2020) (quoting Ineos, 783 F.3d at 871). 

Here, it is undisputed that the Muller patents disclose 

a range that overlaps with the claimed range. In finding 

that the Muller patents anticipate the asserted claims of 

the ’589 patent, however, the district court did not apply 

the traditional framework for analyzing overlapping 

ranges. Instead, the district court relied on the Kennametal “immediately envisage” line of cases to identify 

discrete points in Muller’s range and analyzed those discrete points as a point-within-a-range case. Specifically, 

the district court relied on testimony from an Actavis expert, Dr. Robin Rogers, that a person of ordinary skill in 

the art would read Muller’s range to teach “a few examples” 

of TTSs with specific weight ratios, including 9:4 and 9:5 

weight ratios of rotigotine to PVP. UCB II, 2021 WL 

1880993, at *21, ¶ 12 (citing FF2 ¶ 79 (citing J.A. 1370–71 

(Trial Tr. 313:01–314:20))). The district court also relied 

on another Actavis expert, Dr. Mark Prausnitz, who testified that a skilled artisan would see five or so examples, 

including “1.5, 2, 3, 4, [and] 5 [and] maybe you would even 

go to half integers, but a POSA would not expect to look in 

more granular detail than that to calculate th[e] range” 

2 Citations to “FF” refer to the paragraphs within the 

district court’s findings of fact.

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taught by Muller. J.A. 1428 (Trial Tr. 371:03–10). Based 

on this testimony, the district court found that “[a] POSA

would envisage examples at whole and half integer percentages of PVP and would not look in more granular detail.” UCB II, 2021 WL 1880993, at *11, ¶ 79. As noted 

above, the envisage language stems from Kennametal, 

where we held that a reference can anticipate a claim “even 

if it ‘does not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in 

the art, reading the reference, would ‘at once envisage’ the 

claimed arrangement or combination.” 780 F.3d at 1381

(cleaned up) (citation omitted). Continuing, the court analyzed this case as a point-within-the-range case—not an 

overlapping range case—and found that because a person 

of ordinary skill in the art would readily envisage a combination of 9% rotigotine with 4% or 5% PVP by weight from 

the range disclosed by Muller, Muller anticipates the 

’589 claims’ recitation of a weight range from “about 9:4 to 

about 9:6.” UCB II, 2021 WL 1880993, at *21–22. 

UCB argues that the district court erred by ignoring 

our case law regarding overlapping ranges, which requires 

considering the criticality of the claimed range. We agree. 

The district court’s use of the “immediately envisage” 

line of cases to convert this case into a point-within-a-range 

case constitutes an improper application of our precedent 

governing overlapping ranges.3 We rejected similar attempts to convert the disclosure of a range into the disclosure of individual values in Ineos, 783 F.3d at 869. There, 

we explained that the disclosure of a range is not a 

3 In addition, the court’s fact finding that a person of 

ordinary skill in the art would only consider half and whole 

integers contradicts the specification of the ’589 patent. 

Table 3 of the ’589 patent, for example, discloses a ratio of

1.6, neither an integer nor a half integer. 

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12 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

disclosure of the endpoints of the range or other discrete 

points within the range. Id.

The district court’s analysis also improperly extends 

Kennametal, 780 F.3d at 1381–83. As we held in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 

1270, 1274 (Fed. Cir. 2017): 

Kennametal does not stand for the proposition that 

a reference missing a limitation can anticipate a 

claim if a skilled artisan viewing the reference 

would “at once envisage” the missing limitation. 

Rather, Kennametal addresses whether the disclosure of a limited number of combination possibilities discloses one of the possible combinations.

Here, the district court’s use of Kennametal—supporting its finding that Muller’s range recites a specific example and thus that the specific example anticipates the 

entire range recited in the ’589 patent claims—goes beyond 

Kennametal’s intended application. We determine that it 

was legal error for the district court to do so. 

Actavis urges us to nonetheless affirm the district 

court’s finding of anticipation because the district court, in 

effect, conducted the criticality analysis required in overlapping range cases. Appellee’s Br. 46–49; see also Genentech, 946 F.3d at 1338. Actavis attempts to characterize 

some of the district court’s findings—e.g., that “[t]he 9:4 to 

9:6 ratios produce results that are similar in kind to the 

Prior Art TTS Examples (i.e.[,] 9:2 or 9:3), with similar levels of stability (i.e., lack of crystallization)”—as a finding of 

criticality for the claimed range of about 9:4 to about 9:6. 

See UCB II, 2021 WL 1880993, at *25, ¶ 44. Even if we 

saw some merit in Actavis’s suggestion, we need not resolve this issue because, as discussed below, we affirm the 

district court’s obviousness determination. 

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II

We next turn to obviousness. The district court held 

the asserted claims obvious based on two separate grounds, 

including that: (1) the claimed range of weight ratios of rotigotine to PVP overlap with that disclosed in the Muller 

patents and UCB failed to rebut this prima facie case of 

obviousness; and (2) the prior art’s 9:2 and 9:3 TTS examples as modified by Muller’s teachings of a range of 1.5% to 

5% PVP render the claims obvious.4 UCB II, 2021 WL 

1880993, at *23–26. UCB challenges the district court’s 

holdings on both grounds. Because we affirm the judgment 

of invalidity on the first ground of obviousness, we do not 

reach the second ground. 

The ultimate question of obviousness is a question of 

law based on underlying fact findings. Merck & Co. v. Teva 

Pharms. USA, Inc., 395 F.3d 1364, 1369 (Fed. Cir. 2005)

(citation omitted). We review the question of law de novo 

and the underlying fact findings from bench trials for clear 

error. Id. (citation omitted). “A factual finding is only 

clearly erroneous if . . . we are left with the definite and 

firm conviction that a mistake has been made.” Merck 

Sharp & Dohme Corp. v. Hospira, Inc., 874 F.3d 724, 728 

(Fed. Cir. 2017) (citation omitted); see also Anderson v. City 

of Bessemer City, 470 U.S. 564, 574 (1985) (“Where there 

are two permissible views of the evidence, the factfinder’s 

choice between them cannot be clearly erroneous.” (citation 

omitted)). Whether prior art teaches away from the 

claimed invention, whether the claimed invention is new 

and unexpected, and “the existence of and weight assigned 

4 The district court also held the asserted claims invalid under obviousness-type double patenting in view of 

claims in the Muller patents. UCB II, 2021 WL 1880993, 

at *26–27. Because we affirm the court’s obviousness determination, we do not reach its obviousness-type double 

patenting determination.

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to any objective indicia of nonobviousness,” like commercial 

success, “are underlying factual questions we review for 

clear error.” Adapt Pharma Operations Ltd. v. Teva 

Pharms. USA, Inc., 25 F.4th 1354, 1364 (Fed. Cir. 2022)

(citing Merck, 874 F.3d at 728). 

A presumption of obviousness applies “[w]here a 

claimed range overlaps with a range disclosed in the prior 

art.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 

(Fed. Cir. 2006) (citation omitted). This presumption can 

be overcome if the “prior art teaches away from the claimed 

range, . . . the claimed range produces new and unexpected 

results,” or other evidence demonstrates non-obviousness 

of the claimed range. Id. (citation omitted). “A presumption of obviousness does not shift the burden of persuasion 

to the patentee to prove nonobviousness, but a presumption establishes that, ‘absent a reason to conclude otherwise, a factfinder is justified in concluding that a disclosed 

range does just that—discloses the entire range.’” Almirall, LLC v. Amneal Pharms. LLC, 28 F.4th 265, 272 

(Fed. Cir. 2022) (quoting E.I. duPont de Nemours & Co. 

v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018)).

Here, it is undisputed that the range claimed in the 

’589 patent overlaps with the ranges taught by the Muller 

patents. Thus, Actavis established a prima facie case of 

obviousness. On appeal, UCB contends that the Muller patents do not reflect the state of the art at the time of the 

invention because they precede Form II of rotigotine and, 

as such, their disclosed range cannot render the claimed 

range obvious. In addition, UCB contends that one of the 

district court’s fact findings—finding number 80—is inconsistent with its finding of obviousness based on the Muller 

patents. 

Continuing, UCB contends that a different prior art 

reference—U.S. Patent App. Pub. No. 2009/0299304 

(Tang)—is actually the closest prior art because, unlike the 

Muller patents, Tang addresses the stability problem. 

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UCB further contends that Tang teaches away from the 

claimed range, thus establishing nonobviousness of the 

claimed range. Tang is directed to TTSs with “a therapeutic agent in a stable amorphous form.” J.A. 4861, [0002]. 

It teaches “the importance of the weight ratio of the polymeric stabilizer to the therapeutic agent in stabilizing the 

therapeutic agent.” Id. Specifically, Tang taught that if a 

therapeutic agent has a low Tg, the weight ratio of the polymeric material to the amorphous form of a therapeutic 

agent is 2 or greater. J.A. 4862, [0030]. And if the therapeutic agent has a high Tg, the ratio is 0.5 or greater. 

J.A. 4862, [0031]. Tang focused on working examples of 

scopolamine, which is used to treat motion sickness. UCB 

II, 2021 WL 1880993, at *14, ¶¶ 117–20; see also J.A. 4868, 

[0100]. None of Tang’s working examples include rotigotine as the active ingredient. J.A. 4868–70, [0100]–[0105]. 

And Tang does not disclose the Tg of rotigotine. See UCB 

II, 2021 WL 1880993, at *7, ¶ 45. 

In addition, UCB asserted at trial that the claimed 

weight ratio range of “from about 9:4 to about 9:6” exhibited unexpected results. According to UCB, given the “failure” of the Original Neupro® at 9:2, it was expected that 

the only slightly larger claimed range of “about 9:4 to about 

9:6” would exhibit the same stability failure as the prior art 

TTS examples. Appellant’s Br. 45. 

Finally, UCB introduced evidence to establish commercial success and rebut the prima facie case of obviousness. 

Mainly, UCB introduced evidence of significant sales of reformulated Neupro®. UCB contended that it was entitled 

to a presumption of nexus between these sales and the 

claims because the claims are coextensive with reformulated Neupro®. Alternatively, UCB explained that the 

sales were tied to the claimed range of rotigotine to PVP 

ratios because “[t]he FDA would not allow Original 

Neupro® to remain on the market, even under cold-chain 

storage, due to the formation of crystals.” Appellant’s 

Br. 62. And without the alleged invention, UCB argues, 

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16 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

there is no viable product. Id. (citing various expert testimony, such as that of Dr. Rahul Guha, who testified that 

when original Neupro® was off the market, previous patents existed, and the sales were zero). 

The district court found that the Muller patents, and 

not Tang, are the closest prior art. To support this finding, 

the court reasoned that (1) Tang does not disclose working 

examples with rotigotine; (2) Tang does not disclose the Tg 

of rotigotine; and (3) the Muller patents are the closest 

prior art because, unlike Tang, they disclose and claim a 

TTS with a range of R:PVP ratios including about 9:4 to 

9:5. UCB II, 2021 WL 1880993, at *14, ¶¶ 118–20. 

Continuing, the district court found that the presumption of obviousness was not overcome based on either the 

prior art teaching away from the claimed range or new and 

unexpected results which are “different in kind and not 

merely in degree.” Id. at *25, ¶ 44 (quoting E.I. DuPont, 

904 F.3d at 1006). The district court also found that no 

other objective indicia of nonobviousness overcame the 

prima facie case of obviousness. Id. at *25, ¶ 42. UCB 

challenges each of these findings on appeal, and we address 

each argument in turn below. 

A 

First, the district court did not clearly err in rejecting 

UCB’s argument that Form II changed the state of the art, 

thus rendering all pre-Form II prior art, including the Muller patents, irrelevant. As the district court found based on 

expert testimony and prior art, crystallization in both 

Form I and Form II occurs due to hydrogen bonding between two rotigotine molecules. As UCB’s expert, Dr. Allan Myerson, explained, PVP stabilizes amorphous 

rotigotine by creating hydrogen bonds with the individual 

rotigotine molecules, thereby preventing hydrogen bonding 

between rotigotine molecules and thus preventing crystallization. And while Form II is considered more stable and 

less soluble than Form I, other evidence, including expert 

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UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 17

testimony, indicated that small, rather than systemic, 

changes to TTSs were needed to achieve stabilization. For 

example, original Neupro® was still used in the U.S. under 

a compassionate use program. UCB II, 2021 WL 1880993, 

at *10, ¶ 67. In addition, a medical doctor specializing in 

Parkinson’s disease published an article showing that 

there were no crystallization issues with original Neupro®

when treating over 100 patients. Id. at *9, ¶ 65. Finally, 

Actavis’s expert, Dr. Prausnitz, explained how the success 

of cold-chain storage for original Neupro® in Europe indicated that a “relatively small adjustment” of the of R:PVP 

ratios was needed. Id. at *18, ¶ 149 (citing J.A. 1449–50 

(Trial Tr. 392:17–393:04)). In short, we find no clear error 

in the district court’s determination that, due to the similarities in Form I and Form II, no cataclysmic change rendered pre-Form II prior art unusable. 

Nor does Finding 80 dictate that pre-Form II prior art 

should be disregarded and thus that Tang is the closest 

prior art. Finding 80 states:

The range of R:PVP ratios in the Asserted Claims 

in this case and the like range in the Muller Patents’ claims significantly overlap and there is no 

meaningful difference in how a POSA would view 

them. 

Id. at *11, ¶ 80. UCB interprets Finding 80 to mean that 

“there is no meaningful difference across the entire range 

in Muller.” Appellant’s Br. 44 (emphasis added). In UCB’s 

view, because original Neupro® (a 9:2 TTS) crystallized, 

Finding 80 means that a person of ordinary skill in the art 

at the time of the invention would consider the entire range 

of 9:1.5 to about 9:6 in the Muller patents similarly flawed. 

But we read Finding 80 in the context of all the other findings by the district court to simply mean that the claimed 

range and that in the Muller patents are not patentably 

distinct. Any confusion about the meaning of this finding 

is further removed by referencing the district court’s record 

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18 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

citation for Finding 80: Actavis’s expert, Dr. Prausnitz,

testified about the “substantial overlap in the range of 9 to 

4 and 9 to 5 between [the] two claim sets.” J.A. 1455 (Trial 

Tr. 398:02–09 (emphasis added)). In short, UCB misreads 

Finding 80—an error infecting much of its obviousness arguments on appeal. As such, Finding 80 does not support 

UCB’s argument that all pre-Form II art should be disregarded and hence, that the district court should have recognized Tang as the closest prior art. Thus, we find no 

clear error in the district court’s contrary findings. 

We also see no clear error in the district court’s finding 

on teaching away. A reference teaches away “when a person of ordinary skill, upon reading the reference, would be 

discouraged from following the path set out in the reference, or would be led in a direction divergent from the path 

that was taken.” Galderma Lab’ys., L.P. v. Tolmar, Inc., 

737 F.3d 731, 738 (Fed. Cir. 2013) (quoting DePuy Spine, 

Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 

(Fed. Cir. 2009)). By contrast, a reference does not teach 

away if it “merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention 

claimed.” DePuy, 567 F.3d at 1327 (quoting In re Fulton, 

391 F.3d 1195, 1201 (Fed. Cir. 2004)). 

The district court viewed Tang as simply teaching an 

alternative invention. Indeed, the court acknowledged that 

Tang could lead a person of ordinary skill to increase the 

amount of PVP beyond the range of 9:4 to 9:6 ratios of rotigotine to PVP. UCB II, 2021 WL 1880993, at *26, ¶ 50. 

With knowledge of the Tg for rotigotine free base, UCB’s 

expert, Dr. Myerson, testified that Tang teaches a rotigotine to PVP weight ratio of 9:18 for long-term stability. But 

the district court found that Tang would not dissuade a person of ordinary skill in the art from first trying a weight 

ratio within the range of 9:4 to 9:6 rotigotine to PVP. Id. 

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UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 19

In Galderma, we held that the district court erred in 

finding that three prior art references taught away from 

the claimed invention because they merely taught an alternative composition that “may be optimal or standard” that 

was not the claimed invention. 737 F.3d at 739. In particular, two of the prior art references mentioned side effects 

for adapalene concentrations from 0.03% to 0.1% but did 

not mention the claimed concentration of 0.3% adapalene. 

Id. at 738–39. Nor did the references “indicate in any way 

that the side effects would be serious enough to dissuade 

the development of a 0.3% adapalene product.” Id. at 739. 

The three references demonstrated that 0.1% was the 

“standard or optimal concentration of adapalene.” Id. We 

held that “teaching that a composition may be optimal or 

standard does not criticize, discredit, or otherwise discourage investigation into other compositions.” Id. Thus, the 

prior art references did not teach away. 

Here, the district court’s finding that Tang does not 

teach away is not clearly erroneous for the same reasons. 

Tang does not criticize, discredit, or otherwise dissuade a 

skilled artisan from investigating the claimed range of ratios. In other words, Tang expresses a preference for a 

higher PVP percentage (a 9:18 rotigotine to PVP weight ratio), but it does not teach away from the claimed range. 

Contrary to UCB’s suggestion, we do not understand the 

district court’s finding that Tang does not teach away as 

resting on the fact that (1) Tang lacks any reference to the 

Tg of rotigotine and (2) no working examples include rotigotine in Tang. Instead, we understand the district court to 

have reasoned that, like the prior art in Galderma, Tang 

does not expressly teach away from the claim invention. 

Rather, it merely expresses a preference for an optimal concentration (a 9:18 ratio). 

Ultimately, even if we saw some merit in UCB’s view 

of the evidence, we do not reweigh the evidence. See Teva 

Pharms. USA, Inc. v Sandoz, Inc., 574 U.S. 318, 327 (2015) 

(“A district court judge who has presided over, and listened 

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20 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

to, the entirety of a proceeding has a comparatively greater 

opportunity to gain . . . familiarity [with specific scientific 

problems and principles] than an appeals court judge who 

must read a written transcript or perhaps just those portions to which the parties have referred.”). In view of this 

record, we cannot say that the district court’s finding that 

the prior art does not teach away from the range of 9:4 to 

9:6 weight ratio of rotigotine to PVP is clearly erroneous. 

B 

We next address whether the court erred in finding 

that UCB had not established unexpected results. Specifically, UCB argues that the lack of crystallization in patches 

having a rotigotine to PVP weight ratio within the 9:4 to 

9:6 weight range is unexpected. This is because, as UCB 

points out, original Neupro® (which had a 9:2 rotigotine to 

PVP weight ratio) was the only existing patch within the 

range of rotigotine to PVP ratios disclosed in the Muller 

patents—and original Neupro® crystallized. See Appellant’s Br. 52–53. We are not persuaded by UCB’s arguments and conclude that the district court’s finding is not 

clearly erroneous.

“To be particularly probative, evidence of unexpected 

results must establish that there is a difference between 

the results obtained and those of the closest prior art, and 

that the difference would not have been expected by one of 

ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 

967, 977 (Fed. Cir. 2014) (citation omitted). A difference of 

degree is not as persuasive as a difference in kind—i.e., if 

the range produces “a new property dissimilar to the 

known property,” rather than producing a predictable result but to an unexpected extent. Id. Furthermore, evidence of superior efficacy does not undercut a reasonable 

expectation of success. See Hoffmann–La Roche Inc. 

v. Apotex Inc., 748 F.3d 1326, 1331, 1333–34 (Fed. Cir.

2014).

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The district court found that the claimed range did not 

produce new and unexpected results. The court determined that results obtained in the alleged invention and 

those in prior art, like the ’747 Muller patent, are “similar 

in kind . . . [and] with similar levels of stability (i.e., lack of 

crystallization).” UCB II, 2021 WL 1880993, at *25, ¶ 44. 

We read the district court’s finding of similar levels of stability as a finding that any differences in stability between 

the claimed range and prior art is one of degree. 

Dr. Prausnitz’s expert testimony, cited by the court, id., explains that adding slightly more PVP increased stability, 

but that such a change is one of degree; “there would be no 

new properties,” J.A. 1469 (Trial Tr. 412:07–22). 

The court relied on other evidence to support its finding 

that a person of ordinary skill would expect the claimed rotigotine to PVP weight ratio range and the range disclosed 

in the prior art to provide stability in a similar way. See 

UCB II, 2021 WL 1880993, at *25, ¶ 46 (citing FF ¶¶ 41–

43, 129, 134). For example, the district court cited to prior 

art and expert testimony showing that PVP was “the most 

effective crystallization inhibitor” tested. DTX-118 

at 118.001; see also UCB II, 2021 WL 1880993, at *25, ¶ 46

(citing FF ¶ 41 (J.A. 1405–06 (Trial Tr. 348:09–349:10) (explaining that the chemistry underlying rotigotine/PVP interactions “was very well understood in 2009”); JTX-6 

(Schacht) at [0059] (explaining that a “particularly preferred example of . . . a crystallization inhibitor is soluble 

[PVP]”))). 

Further, the court found that a person of ordinary skill 

would expect that increasing the concentration of PVP in a 

TTS would increase the stability of the amorphous drug. 

UCB II, 2021 WL 1880993, at *7, ¶ 43. In support of its 

finding, the court relied on UCB’s expert, Dr. Myerson, who 

testified that, as a general principle, “increas[ing] . . . PVP 

should increase the stability,” although one would need experiments to verify how much the stability increases. Id.

(citing J.A. 1681–82 (Trial Tr. 583:24–584:14)). 

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22 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

The district court also found that a person of ordinary 

skill in the art would know that only minor changes to the 

amount of PVP were needed to address crystallization of 

original Neupro® given the success with cold-chain storage. 

Id. at *16, ¶ 134. The court cited Actavis’s expert, Dr. Rogers, who testified that cold storage helps reduce crystallization of amorphous materials (which occurs when 

molecules bond to each other), because the cold reduces the 

mobility of molecules. Id. (citing J.A. 1128 (Trial 

Tr. 109:09–22)). The court also leaned on Actavis’s expert, 

Dr. Prausnitz, who testified that the lack of crystallization 

at cold temperatures for the 9:2 patch suggests “that a fundamental change in the patch design isn’t needed” and, instead, “increasing PVP is going to be something that can 

get . . . over this hurdle [of crystallization] and increase the 

stability.” Id. (citing J.A. 1449–50 (Trial Tr. 392:17–

393:04)). 

UCB explains that there is clear evidence of unexpected results because “embodiments of the claimed range 

do inhibit crystals, whereas those immediately neighboring 

among the Muller range do not.” Appellant’s Br. 27–28. 

According to UCB, the district court erred because (1) per 

Finding 80, a person of ordinary skill would have expected 

the entire Muller range to crystallize after Form II, Appellant’s Br. 52–53; (2) the district court ignores “the crux” of 

the ’589 patent’s results—improved long-term, room temperature stability as opposed to stability in general terms, 

Appellant’s Br. 54; (3) the court dismissed evidence of unexpected results solely based on UCB’s own internal-confidential efforts of trying a 9:4 patch within weeks of 

learning of Form II and the crystallization problem, Appellant’s Br. 28, 35, 49; and (4) the district court’s statement 

that the range claim was “similar in kind” to the prior art 

TTS examples “became categorically untrue after Form II 

appeared,” Appellant’s Br. 53.

First, as mentioned above, UCB misreads Finding 80. 

That original Neupro® (9:2) crystallized does not dictate 

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UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 23

that a person of ordinary skill in the art at the time of the 

invention would think that the entire Muller patent range 

(of about 9:1.5 to 9:5) would crystallize. 

Second, UCB’s references to “long-term, room temperature stability” reflect UCB’s failed claim construction argument. J.A. 1006 n.4; J.A. 1000–10. During claim 

construction UCB argued that claim 1’s “method for stabilizing rotigotine” required it to be “capable of maintaining 

the non-crystalline rotigotine in noncrystalline form for at 

least 2 years at room temperature or temperatures not exceeding [25 degrees Celsius].” J.A. 1006 n.4. The district 

court disagreed, rejecting the importation of a limitation 

from the specification. Id. UCB does not challenge the district court’s claim construction on appeal. Accordingly, 

UCB’s argument that the district court ignored long-term 

room temperature stability fails. 

Third, UCB is correct that, under 35 U.S.C. § 103(a), 

“[p]atentability shall not be negated by the manner in 

which the invention was made.” But the district court did 

not solely rely on the inventor’s path for its factual determination. As noted above, the court relied on scientific 

principles like the known effects of PVP and expert testimony regarding a difference in “degree.” See UCB II, 2021 

WL 1880993, at *25, ¶¶ 44, 46. Separately, UCB’s own expert, Dr. Richard Guy, testified that “a person of ordinary 

skill in the art would kind of do what LTS and UCB did,” 

J.A. 1850–53 (Trial Tr. 752:04–755:09), and the court did 

not clearly err in considering such testimony. Accordingly, 

any error by the district court in this regard was harmless. 

Finally, we are not left with a definite and firm conviction that the district court erred in finding that the claimed 

range was “similar in kind” to the prior art TTS examples

even after Form II. As noted above, the court cited Actavis’s expert, Dr. Prausnitz, who testified that the change 

in stability was one of degree. See UCB II, 2021 WL 

1880993, at *25, ¶ 44 (citing J.A. 1469 (Trial Tr. 412:07–

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24 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

22)). The court also heard UCB’s evidence on Form II, including UCB’s expert testimony on how Form II changed 

the state of the art. As discussed above, the district court 

was entitled to weigh the conflicting expert testimony on 

this point and did not clearly err in declining to adopt 

UCB’s view. 

In sum, the district court’s finding that the claimed 

range did not produce new and unexpected results is not 

clearly erroneous. 

C 

Finally, we address whether the district court erred in 

its analysis of UCB’s evidence of commercial success. Specifically, UCB argues that the district court erred in finding 

no nexus, which led it to disregard the commercial success

of reformulated Neupro®. See Appellant’s Br. 41. We disagree. 

We have repeatedly held that evidence of commercial 

success must have a nexus to the claims to be given weight 

in an obviousness analysis. In other words, there must be

“a legally and factually sufficient connection” between the 

evidence and the patent claims. Fox Factory, Inc. v. SRAM, 

LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). Simply speaking, there may be many reasons a product is commercially successful; it is only where the success 

is due to the claimed invention that commercial success can 

show nonobviousness. 

We have recognized that a patentee is entitled to a rebuttable presumption of nexus where the patentee shows 

that the commercial success is tied to a specific product and 

that the product is the invention disclosed or claimed. Id.

(citation omitted). Even if a presumption of nexus is inappropriate, a patentee can prove nexus “by showing that the 

evidence of secondary considerations is the ‘direct result of 

the unique characteristics of the claimed invention.’” Id.

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UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 25

at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 

(Fed. Cir. 1996)). 

Here, the district court held that UCB was not entitled 

to a presumption of nexus under Fox Factory because numerous patents covered Neupro®. UCB II, 2021 WL 

1880993, at *26, ¶ 53. In the alternative, the district court 

held that any inference of obviousness from UCB’s commercial success evidence is weak because the Muller patents have operated as blocking patents dissuading 

competitors from developing a rotigotine TTS. Id. at *26,

¶ 54. Because the district court did not clearly err in finding UCB’s evidence of commercial success weak, we are not 

persuaded by UCB’s arguments on appeal. 

As in Merck and Galderma, the district court was entitled to consider the existence of blocking patents when 

weighing UCB’s evidence of commercial success. In Merck

and Galderma, we held that where market entry by others 

was precluded due to blocking patents, the inference of 

non-obviousness of the asserted claims from evidence of 

commercial success may be weak. See Galderma, 737 F.3d 

at 740 (citing Merck, 395 F.3d at 1377). For example, in 

Galderma, we explained that Galderma’s earlier patents 

blocked the market entry of the claimed improvement directed to a particular concentration of adapalene until long 

after the time of the invention. Id. at 740. As such, “no 

entity other than Galderma could have successfully 

brought to 0.3% to market prior to [the time of the invention],” and thus the commercial success evidence was of 

“minimal probative value.” Id. at 740–41. 

Here, the district court found that UCB’s Muller patents weakened its evidence of commercial success. UCB 

II, 2021 WL 1880993, at *26, ¶ 54 (quoting Galderma, 

737 F.3d at 740–41). The district court explained that “the 

Muller Patents have operated as blocking patents, dissuading competitors from developing a rotigotine TTS, at least 

until the expiration of the ’434 [Muller] Patent.” Id. (citing 

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26 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

FF ¶¶ 158–61). We cannot say that the court clearly erred 

in its analysis given its reliance on our precedent and expert testimony. Indeed, the court’s fact findings were fully 

supported by expert testimony from Mr. Ivan T. Hofmann. 

Id. at *19, ¶ 158. Mr. Hofmann, Actavis’ economic expert, 

testified that he identified the Muller patents as blocking 

patents because the “parameters that existed in prior patents that would deter anyone other than UCB from conceding the alleged invention of the ’589 patent.” J.A. 1907 

(Trial Tr. 809:14–810:17). He opined that “essentially nobody other than UCB ha[d] an economic incentive to have 

conceived of the alleged invention that’s described in the 

’589 patent.” J.A. 1900 (Trial Tr. 802:17–19). 

UCB argues that even when existing patents cover a 

drug, companies still engage in drug development, and the 

court’s analysis would effectively brand all co-owned patents “blocking” patents. Appellant’s Br. 63–64 (citing 

J.A. 1882–86 (Trial Tr. 784:05–788:06)). As an example, 

UCB cites to the Tang reference as evidence that Mylan 

sought patent protection for its own transdermal rotigotine 

system despite the existence of the Muller patents to show 

that companies engage in drug development despite existing patents covering that drug. Appellant’s Br. 64. 

We disagree that the court’s analysis brands all coowned patents as “blocking” patents. The court noted that 

UCB has held exclusive worldwide rights to rotigotine for 

all therapeutic indications since 1998, UCB II, 2021 WL 

1880993, at *19, ¶ 159; that until the ’434 Muller patent 

expired, Actavis was enjoined from marketing a generic 

version of reformulated Neupro®, id. at *26, ¶ 53; and cited 

expert testimony from Mr. Hofmann who explained that 

the Muller patents would deter anyone other than UCB 

from developing the alleged invention in the ’589 patent, 

id. at *19, ¶ 158 (citing J.A. 1900–01 (Trial Tr. 802:11–

803:08)). By contrast, UCB’s expert, Dr. Guha, did not analyze whether UCB’s multiple patents were responsible for 

commercial success. Id. at *19, ¶ 160. The district court, 

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in determining that UCB’s extensive patent rights reduced 

the weight of the evidence of commercial success, did not 

impermissibly create a bright-line rule; instead, it limited 

its analysis to the specific facts in the record. 

UCB essentially asks us to reweigh the evidence, giving greater weight to Tang and Dr. Guha, one of UCB’s experts, to find the evidence of commercial success overcomes 

the prima facie case of obviousness. For example, Dr. Guha

explained that there might be an incentive for both a patentee and third party to come to a licensing agreement for 

a drug protected by patents when a third party “expands 

the pie” by, for example, creating a better formulation of a 

drug that expands the product or, here, getting original 

Neupro® back into the U.S. market. J.A. 1882–86 (Trial 

Tr. 784:09–788:06). But the district court already considered this testimony and argument, and it is not our province to reweigh evidence under these circumstances. See 

Teva Pharms., 574 U.S. at 327. 

Contrary to UCB’s assertions, the district court did 

consider that reformulated Neupro® allowed UCB to re-enter the U.S. market. The court’s assignment of minimal 

weight to this evidence was not clearly erroneous given evidence that original Neupro® remained in the U.S. market 

through the compassionate use program. See UCB II, 2021 

WL 1880993, at *10, ¶ 67. 

We also disagree that the district court’s decision

lacked extensive analysis. UCB alleges, for example, that 

the district court’s statement that the slight adjustment of 

PVP content in reformulated Neupro® is not what drives 

demand is conclusory. See id. at *19, ¶ 161; Reply Br. 28. 

But the preceding sentence explains that efficacy and 

safety of a rotigotine-containing TTS drive sales in reformulated Neupro®. For support, the court cites to Mr. Hofmann, Actavis’s expert, who testified that “what’s really 

driving the [relaunch] sales are the safety and efficacy of a 

transdermal patch with rotigotine in a known weight ratio 

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28 UCB, INC. v. ACTAVIS LABORATORIES UT, INC. 

that was already known.” See UCB II, 2021 WL 1880993, 

at *19, ¶ 161 (citing J.A. 1900–02 (Trial Tr. 802:14–

804:10)). Thus, we are unpersuaded by UCB’s argument.

As for the rest of the district court’s decision, we do not 

consider it “devoid of meaningful analysis” as UCB argues, 

citing OSRAM Sylvania, Inc. v. American Induction Technologies, Inc., 701 F.3d 698, 707 (Fed. Cir. 2012). See Reply 

Br. 30. In OSRAM, the district court “did not make any 

specific findings of fact and gave no basis” to understand 

its prior statement that disputed issues of fact existed. 

701 F.3d at 707. The appellee there countered that the 

findings were “ascertainable from the parties’ own arguments,” but we held that it was not our role to “scour the 

record and search for something to justify a [district] 

court’s conclusion.” Id. In contrast, here, the district court 

provided over forty pages of specific findings of fact and citations to such findings in its conclusions of law, as discussed above. 

In sum, we find that the district court did not clearly 

err in finding that the evidence of commercial success is 

weak. 

* * * 

We have considered UCB’s remaining arguments on 

appeal and find them unpersuasive. In light of the evidentiary record, we do not see any error with the court’s conclusion of obviousness based on the Muller patents. 

CONCLUSION

For the reasons above, we affirm the district court’s 

judgment that the asserted claims are invalid as obvious. 

AFFIRMED

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