G.D. Searle LLC v. Lupin Pharms., Inc., __ F.3d __ (Fed. Cir. June 23, 2015) (Prost, BRYSON, Hughes) (E.D. Va. Allen) (2 of 5 stars)

Federal Circuit affirms invalidity judgment for obviousness-type double patenting.  This was a follow-on to Pfizer, Inc. v. Teva Pharms., Inc., 518 F.3d 1353 (Fed. Cir. 2008), which invalidated a Pfizer patent for obviousness-type double patenting.  During the initial application, the applicant received a restriction requirement for claims to compositions, compounds, and methods of use.  It filed a divisional and obtained composition claims.  It later filed a continuation-in-part to methods of use and obtained those claims.  Pfizer held the CIP claims invalid based on the earlier composition claims because a CIP’s claims are not protected from double-patenting by section 121’s safe harbor.  The patentee responded by obtaining a reissue patent that re-designated the application as a divisional, deleted the new matter from the CIP, and narrowed the claims so they did not cover any new matter.  It asserted the reissue in this case.

The reissue patent was invalid because it still did not fall within section 121’s safe harbor.  Section 121 protects only claims in either the original application or a divisional of it, and the reissue patent was neither.  Instead, the reissue stemmed from an application (the original CIP) that contained new matter and thus could not be a divisional.  Simply deleting the new matter from the reissue specification did not change the character of the CIP application through which it claimed priority.  Fairness to the public did not permit the patentee to use reissue to retroactively re-designate the CIP as a divisional.  Moreover, the CIP descended from a PCT that also had new matter and was not a divisional of the initial application.

The safe harbor was also inapplicable for a second, independent reason.  The reissue claims and the prior art composition claims were not “derived from the same restriction requirement.”  Instead, the reissue’s method claims stemmed from a separate restriction requirement made during prosecution of the CIP.  “When separate restriction requirements are imposed on separate applications and the record does not show that any of the various restriction requirements carried forward from one application to the next, the earlier restriction requirement cannot be viewed as having continued in effect with respect to the later-filed application.”  Slip op. at 11.  Here, nothing suggested that the restriction requirement in the CIP was “carried forward” from the restriction in the initial application.  Moreover, Boehringer Ingelheim Int’l GmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010), did not help the patentee because that case simply held that a divisional of a divisional can qualify for the safe harbor, which was not the situation here.

Finally, the panel noted that it was not deciding whether the “errors” Pfizer had cited during the reissue prosecution were actually correctable under section 251.