Category Archives: Double Patenting

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

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.

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.

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

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

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.

Docket No. 2014-1689 PROST, PLAGER, WALLACH March 17, 2015 Non-precedential Brief Summary: Board decision that later-filed patent was invalid for double-patenting affirmed since “consisting essentially of” language (i.e., “can include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

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

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.

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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