Digest of G.D. SEARLE LLC V. LUPIN PHARMACEUTICALS, INC., No. 2014-1476 (Fed. Cir. June 23, 2015) (precedential). On appeal from E.D. Va. Before Prost, Bryson, and Hughes.

Procedural Posture: Plaintiff patentee appealed from a final judgment invalidating claims for obviousness-type double patenting. CAFC affirmed.

  • Double Patenting: The safe harbor provision of 35 U.S.C. § 121, which may protect a patent that issues on a divisional application from invalidation based on a related patent that issued on an application as to which a restriction requirement was made, or on an application filed as a result of such a requirement, did not apply. The reissued application was not a divisional of the original application despite being designated as such, because it contained new matter not present in the original application. The Federal Circuit reasoned that it would be unfair to take advantage of the safe harbor provision simply by designating it as a divisional application years later, because the public was not free to practice the new matter in the interim. The Federal Circuit also concluded that the safe harbor provision of 35 U.S.C. § 121 did not apply to protect a reissued patent from the use of a divisional patent where the reissued and divisional patent were derived from different restriction requirements. Section 121 only applies to a divisional of a divisional of the grandparent application so long as they share “common lineage.”