Category Archives: Double Patenting

FC panel affirms DC decision that Torrent did not show obviousness of Takeda’s algoliptin claims

Posted on February 17, 2021 by Patrick J. Halloran, Ph.D., J.D.

Takeda Pharm. Co. et al. v. Torrent Pharm. Ltd., et al. Docket No. 2020-1552, -1598 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1552.OPINION.2-16-2021_1733600.pdf) (Non-Precedential) DYK, MAYER, CHEN February 16, 2021 Brief Summary:  DC holding that Torrent did not show Takeda’s claims related to algoliptin obvious affirmed. Summary:  … Continue reading →

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DC decision of no invalidity including no common ownership regarding double-patenting affirmed

Posted on July 28, 2020 by Patrick J. Halloran, Ph.D., J.D.

Immunex Corporation, Amgen Manuf., Ltd., Hoffman La-Roche Inc. v. Sandoz Inc., et al. Docket No. 2020-1037 O’MALLEY, REYNA (D), CHEN July 1, 2020 Brief Summary: DC finding of no invalidity for obviousness-type double-patenting (no common ownership), written description or obviousness … Continue reading →

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

Posted on March 17, 2020 by Patrick J. Halloran, Ph.D., J.D.

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 v. Mylan Pharmaceuticals Inc. Docket No. 2019-1172 DYK, MOORE, HUGHES March 16, 2020 Non-precedential Brief Summary: DC decision of ineligibility under 101 for method of treatment claims reversed; invalidity for double-patenting and obviousness affirmed.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

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

Posted on December 12, 2018 by Patrick J. Halloran, Ph.D., J.D.

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 Patrick J. Halloran, Ph.D., J.D.

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 Patrick J. Halloran, Ph.D., J.D.

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 Patrick J. Halloran, Ph.D., J.D.

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 Patrick J. Halloran, Ph.D., J.D.

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”)

Posted on August 25, 2014 by Patrick J. Halloran, Ph.D., J.D.

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 Patrick J. Halloran, Ph.D., J.D.

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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