Category Archives: Double Patenting

Method of treatment claims eligible under 101 (DC reversed); DC obviousness findings affirmed

Posted on March 17, 2020 by

Boehringer Ingelheim Pharm. et al. v. Mylan Pharmaceuticals Inc. Docket No. 2019-1172 DYK, MOORE, HUGHES March 16, 2020 Non-precedential Brief Summary: DC decision of ineligibility under 101 for method of treatment claims reversed; invalidity for double-patenting and obviousness affirmed. Summary: … Continue reading →

Posted in Double Patenting, Obviousness, Patentability, Uncategorized | Leave a comment

Novartis Pharm. Corp. et al. v. Ezra Ventures LLC

Posted on December 12, 2018 by

Docket Nos. 2017-2284 MOORE, CHEN, HUGHES December 7, 2018 Brief summary: FC panel agreed with DC that § 156 PTE was proper even if it might otherwise be invalid for obviousness-type double patenting. Summary: Ezra appealed DC conclusion that the … Continue reading →

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Novartis Pharm. Corp. et al. v. Breckenridge Pharm. Inc.

Posted on December 11, 2018 by

Docket Nos. 2017-2173, -2175-6, -2178-80, -2182-84 PROST, WALLACH, CHEN December 7, 2018 Brief summary: DC decision finding that Novartis’s “earlier-filed, but later expiring, patents’s statutorily-granted 17-year term” was invalid for double-patenting in view of its “later-filed, but earlier-expiring patent” reversed … Continue reading →

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UCB, Inc. et al. v Accord Healthcare et al.

Posted on May 28, 2018 by

Docket No. 2017-1909, -1910 REYNA, CLEVENGER, WALLACH May 21, 2018 Brief summary: DC decision of no invalidity of UCB’s OB claims covering the anti-epileptic Vimpat® affirmed. Summary: Accord appealed DC decision that UCB’s RE38,551 covering the anti-epileptic functionalized amino acid … Continue reading →

Posted in Anticipation (35 USC 102), Double Patenting, Generics / ANDA, Obviousness | Leave a comment

In Re: Janssen Biotech, Inc., New York Univ.

Posted on January 24, 2018 by

Docket No. 2017-1257 PROST, REYNA, WALLACH January 23, 2018 Brief summary: The FC panel affirmed the Board obviousness-type double patenting decision since “a patent owner can[not] retroactively bring the challenged patent within the scope of the § 121 safe harbor … Continue reading →

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In Re Hitachi Metals, Ltd.

Posted on March 20, 2015 by

Docket No. 2014-1689 PROST, PLAGER, WALLACH March 17, 2015 Non-precedential Brief Summary: Board decision that later-filed patent was invalid for double-patenting affirmed since “consisting essentially of” language (i.e., “can include those additional elements which do not materially affect the basic … Continue reading →

Posted in Claim Construction, Double Patenting, Obviousness | Leave a comment

Abbvie Inc. et al. v. The Mathilda and Terence Kennedy Inst. of Rheumatology Trust (“Kennedy”)

Posted on August 25, 2014 by

Docket No. 2013-1545 DYK, WALLACH, CHEN August 21, 2014 Brief Summary: Post-URAA patents susceptible to obviousness-type double patenting challenge where there is overlapping subject matter and, for instance, extended term due to PTO delays and/or applicant’s choice of different priority … Continue reading →

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Gilead Sciences, Inc. et al. v. Natco Pharma Limited et al.

Posted on April 24, 2014 by

Docket No. 2013-1418 RADER (D), PROST, CHEN April 22, 2014 Brief Summary: Earlier filed (earlier expiring) / later issued patent may serve as obviousness-type double patenting reference for later filed (later expiring) / earlier issued patent (URAA patents). Dissent argued … Continue reading →

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Promega Corporation v. Applied Biosystems, LLC, Life Technologies Corporation, and California Institute of Technology

Posted on March 12, 2014 by

Docket No. 2013-1454 PROST, MAYER, CHEN March 10, 2014 Non-precedential (Rule 36 judgment) Brief Summary: DC determination of invalidity affirmed (anticipated as earlier patent not filed “by another”; no 103(c) safe harbor as no evidence of “team research” presented). Summary: … Continue reading →

Posted in Anticipation (35 USC 102), Assignment / Ownership, Double Patenting, Obviousness | Leave a comment

St. Jude Medical, Inc. et al. v. Access Closure, Inc.

Posted on September 17, 2013 by

Docket No. 2012-1452 LOURIE(C), PLAGER, WALLACH September 11, 2013 Brief summary: DC conclusion of no double-patenting reversed and its obviousness findings affirmed due to “logical chasm” between claimed invention and combination of references. Summary: ACI appealed DC ruling that the … Continue reading →

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