In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) (opinion by Circuit Judge O'Malley for a panel that also consisted of Circuit Judge Wallach; dissenting opinion by Circuit Judge Newman) [an enhanced version of this opinion is available to lexis.com subscribers], is a common-assignee double patenting case that, in my opinion and apparently in the opinion of Circuit Judge Newman, should have been a patent-application interference.
The case involved a patent application (referred to by the court as "the '509 application") owned by the California Institute of Technology (hereinafter referred to as "Cal Tech") and a patent (referred to by the court as "the '685 patent") jointly owned by the Eidgenossische Technische Hochschule Zurich (hereinafter referred to as "ETHZ") and the Universitat Zurich (hereinafter referred to as "the University of Zurich"). The problem (or perhaps I should call it the source of the majority's confusion) was that Cal Tech's application and the foreign-owned patent had overlapping (but non-congruent) inventorships, caused at least in part by the fact that Prof. Hubbell had moved from Cal Tech to ETHZ. As the majority put it: It is undisputed that, although the '509 application and the '685 patent have two inventors in common -- Hubbell and Schense -- they do not have identical inventive entities and have neither common owners nor common assignees. Due to the rather complex parentage of the '685 patent and the '509 application, "though the '685 patent issued first, it...[was] not available as prior art under 35 U.S.C. §§ 102 or 103 against the claims in the '509 application." However, the examiner of the '509 application rejected its claims over claims in the '685 patent on the ground of common-assignee double patenting, ruling that "the conflicting claims in the '685 patent 'are a species of the instantly claimed invention and as such are encompassed by the claimed invention and thus anticipate the claimed invention'.[footnotes omitted]
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