Glenmark argued on appeal that the '244 patent is invalid for obviousness because both the ACE inhibitor and calcium antagonist were known in the prior art and that it would have been obvious to a person of ordinary skill in the art to try the claimed combination. Glenmark argued that the unexpected benefits of improved kidney and blood vessel function should be excluded from the obviousness analysis because they were not discovered until after the patent was filed.

The Federal Circuit rejected Glenmark's argument that all unexpected properties must be known prior to a patent's filing and held that patentability may consider all of the characteristics possessed by the claimed invention, whenever those characteristics become manifest.

In 2005 and 2006, Glenmark had a policy that all e-mails and related electronic documents would be kept for only one month, and this policy was in place while Glenmark was preparing its ANDA. As a result, Glenmark produced only three e-mails from 2005 and twenty-two e-mail chains from 2006, even though other evidence showed that Glenmark was preparing its ANDA and its Paragraph IV certification during that time. The district court concluded that Glenmark had violated its duty to preserve relevant evidence in anticipation of litigation and instructed the jury that it was permitted to draw an adverse inference that the electronic documents that Glenmark deleted would have been unfavorable to Glenmark's position.

In finding that Glenmark improperly destroyed documents, the district court relied on the US Court of Appeals for the Third Circuit's decision in Bull v. United Parcel Serv., Inc., which explained that spoliation of evidence occurs when:

(665 F.3d 68, 73 (3d Cir. 2012).)

The Federal Circuit agreed with the district court that litigation was reasonably foreseeable to Glenmark no later than February 2006, the date it first asserted work product immunity in its privilege log. The Federal Circuit also held that it was appropriate for the district court to rely on circumstantial evidence to conclude that the deleted documents related to the litigation, including evidence that Glenmark used e-mail for communications about the research and development of the generic drug. In affirming the district court's adverse inference instruction, the Federal Circuit held that the destruction of documents in the course of preparing for litigation is not entitled to judicial protection and that destruction of documents does not need to be concealed from the jury.

Glenmark argued that the damages award was not appropriate because Abbott and ALI did not have standing to sue. Glenmark argued that Abbott did not own any rights in the '244 patent when it granted ALI exclusive distributor rights to Tarka. The district court found that Abbott and ALI had exclusive rights to Tarka in the US based on Abbott's ownership of the NDA and the relationships and agreements among the plaintiffs.

The Federal Circuit agreed with the district court's holding that in determining patent and license rights in complex transfers, the standard is whether the evidence as a whole convinces the trier of fact of mutual intent to transfer and vest exclusive rights. The Federal Circuit affirmed the district court's finding that Abbott's acquisition of the NDA was evidence that the parties intended Abbott and ALI to have exclusive rights to the '244 patent in the US and held that the parties had standing to sue. The Federal Circuit also stated that it was appropriate for all of the parties in the licensing chain to join the suit in order to avoid multiple infringement suits.