Thank You For Submiting Feedback!
United States Court of Appeals for the Federal Circuit
June 23, 2015, Decided
[*1351] [***1328] Bryson, Circuit Judge.
G.D. Searle LLC and Pfizer Asia Pacific Pte. Ltd. (collectively, "Pfizer") appeal from a final judgment entered by the United States District Court for the Eastern District of Virginia. The court invalidated the relevant claims of Pfizer's reissued U.S. Patent No. RE44,048 ("the RE '048 patent") for obviousness-type double patenting. We affirm.
] The doctrine of obviousness-type double patenting is intended to prevent the extension of the term of a patent by prohibiting the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent. Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 689 F.3d 1368, 1376 (Fed. Cir. 2012). The double-patenting issue in this case turns on whether Pfizer is entitled to invoke section 121 of the Patent Act, 35 U.S.C. § 121, as a defense against a claim of double patenting. That issue in turn depends on an interpretation of the prosecution history of the RE '048 patent and U.S. Patent No. 5,760,068 ("the '068 patent"), which is the original of the RE '048 patent.
The '068 patent can be traced back to an application filed with the Patent and Trademark Office ("PTO") in 1993. That application, Serial No. 08/160,594 ("the '594 application"), disclosed and claimed compounds, compositions, [**3] and methods of use regarding the treatment of pain and inflammation without the harmful side effects associated with certain traditional anti-inflammatory drugs.
In an office action dated July 12, 1994, the patent examiner imposed a three-way restriction requirement on the '594 application. [*1352] The restriction requirement identified the compound, composition, and method-of-use claims as each directed to patentably distinct subject matter, and it required Pfizer to elect only one of the three classes of claims. Pfizer elected to prosecute the compound claims in the '594 application, which issued in November 1995 as U.S. Patent No. 5,466,823.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
790 F.3d 1349 *; 2015 U.S. App. LEXIS 10537 **; 115 U.S.P.Q.2D (BNA) 1326 ***
G.D. SEARLE LLC, PFIZER ASIA PACIFIC PTE. LTD., Plaintiffs-Appellants v. LUPIN PHARMACEUTICALS, INC., Defendant-Appellee, TEVA PHARMACEUTICALS USA, INC., Defendant-Appellee, MYLAN PHARMACEUTICALS INC., Defendant-Appellee, WATSON LABORATORIES, INC., Defendant, APOTEX INC., APOTEX CORP., Defendants-Appellee
Prior History: [**1] Appeal from the United States District Court for the Eastern District of Virginia in No. 2:13-cv-00121-AWALRL, Judge Arenda L. Wright Allen.
G.D. Searle LLC v. Lupin Pharms., Inc., 2014 U.S. Dist. LEXIS 133900 (E.D. Va., Mar. 12, 2014)
patent, divisional, reissue, prosecute, compositions, compounds, continuation-in-part, invalidating, safe harbor provision, elected, double patenting, new matter, method-of-use, obviousness-type, lineage, subject matter, designated
Patent Law, Double Patenting, Standards & Tests, US Patent & Trademark Office Proceedings, Continuation Applications, Divisionals & Restrictions