Category: Double Patenting  
By: Jesus Hernandez, Blog Editor/Contributor
TitleAbbvie Inc. v. Kennedy Inst. of Rheumatology Trust, No. 2013-1545 (Fed. Cir. Aug. 21, 2014).
[1: : ODP and Uruguay Round] Kennedy argues that the statutory and policy rationales underlying the obviousness-type double patenting doctrine no longer exist and the doctrine should be discarded. More specifically, Kennedy contends that the Uruguay Round Agreement Act (URAA), Pub. L. 103-465, 108 Stat. 4809, effective June 8, 1995, and its implementation of a 20-year period of patent protection that runs from a patent’s earliest claimed priority date, eliminated the need for the obviousness-type double patenting doctrine.
Abbvie Inc. at *10.
[2: ODP and Genus-Species Patent Family] [Whether] “[…]the differences in subject matter between the claims” of the ’766 and ’442 patents render their claims “patentably distinct” because the ’442 patent applies to [‘][treating] patients with active disease[,’] [which is a species of the ‘766 patent genus characterization as ‘treating all patients in need thereof’].
Id. at *21 (internal citations omitted, text added).
[1: : ODP and Uruguay Round] Although this court has recognized that the doctrine of obviousness-type double patenting is less significant in post-URAA patent disputes, we have also recognized its continued importance. […] We now make explicit what was implicit in Gilead: the doctrine of obviousness-type double patenting continues to apply where two patents that claim the same invention have different expiration dates. We hold that Kennedy is not entitled to an extra six years of monopoly solely because it filed a separate application unless the two inventions are patentably distinct.
Id. at *12-13.
[2: ODP and Genus-Species Patent Family] [S]pecies are unpatentable when prior art disclosures describe the genus containing those species such that a person of ordinary skill in the art would be able to envision every member of the class. Here, we think it is clear that a reader of the ’766 patent could have easily envisioned a species limited to sicker patients [because the disclosure of the genus in the ‘766 parent patent relied on a T-14 study that serves as the basis for the species in the ‘422 child patent].
Id. at *24 (text added).
Category: Double Patenting 
 By: Jesus Hernandez, Blog Editor/Contributor
TitleGilead Sciences, Inc. v. NATCO Pharma Ltd., No. 2013-1418 (Fed. Cir. April 22, 2014).
Issue[W]hether a later-issued patent can serve as a double patenting reference for an earlier-issued patent if the later one expires first.
Gilead Sciences, Inc. at *10.
HoldingWe […] hold that an earlier-expiring patent can qualify as an obviousness-type double patenting reference for a later-expiring patent under the circumstances here [where the ’483 patent and the ‘375 patent have substantially similar specifications, but are not related to each other (e.g., divisional, continuation, CIP)]. In cases where such obviousness-type double patenting is present, a terminal disclaimer can preserve the validity of the later-expiring patent by aligning its expiration date with that of the earlier-expiring patent. That disclaimer will most effectively enforce the fundamental right of the public to use the invention claimed in the earlier-expiring patent and all obvious modifications of it after that patent’s term expires.
Id. at *16 (text added).
Category: Double Patenting 
 By: Joshua Schwartz, Editor-In-Chief/Contributor, &
Jesus Hernandez, Blog Editor/Contributor
TitleSt. Jude Medical, Inc. v. Access Closure, Inc., No. 2012-1452 (Fed. Cir. Sept. 11, 2013).
Issue“[…] ACI agrees that the method/device restriction in the grandparent application affected the line of demarcation [for determining consonance and claiming benefit of the safe harbor provision], but argues that the election of species did not affect the line because an election of species is inherently different from a restriction requirement.” St. Jude Medical, at *14 (text added).
Holding"§ 1.146 states that if no generic claim is found allowable, then the election of species will create a restriction under 35 U.S.C. § 121. 37 C.F.R. § 1.146 […] [Because the election of species requirement on the grandparent application lacked a generic claim when asserted and subsequently allowed], we hold that the restriction resulting from the election of species affected the line of demarcation. In particular, the first restriction separated Group I from Group II, and the second restriction operated on top of the first restriction to separate the Species." St. Jude Medical, at *14-15 (text added).

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