The U.S. Court of Appeals for the Federal Circuit denied per curiam Eli Lilly’s petition for rehearing en banc in Sun Pharmaceutical Industries, Ltd. v. Eli Lilly & Company. A panel of the Federal Circuit had held claims directed to a method of treating cancer with the compound gemcitabine invalid for double patenting because the anticancer utility was mentioned in the specification of a separate application filed on the same day. (See IP Update, Vol. 13, No. 8.) Sun Pharmaceutical Industries Ltd. v. Eli Lilly & Co., Case No. 10-1105 (Fed. Cir., Nov. 1, 2010) (Prost, J.) (Newman, J., dissenting, joined by Rader, J; Lourie, J.; Linn, J.). Judges Newman, Rader, Lourie and Linn dissented from the en banc denial, stating the panel’s holding was contrary to the existing law of double patenting.

The dissent—citing precedents from the Federal Circuit and the Court of Custom Patent Appeals (CCPA) establishing that “obviousness-type double patenting occurs when the claims of a later patent are an obvious variant of the claims of an earlier patent,” that “[t]he specifications of the patents are irrelevant to the double patenting analysis other than to guide in construing the claims,” and that “a double patent analysis occurs only when the earlier patent is not prior art against the later patent,”—insisted that the panel decision “distorts” what had been a clear body of law.

According to the dissenters, the panel “apparently was misdirected by an overly-broad statement in Geneva Pharmaceuticals v. GlaxoSmithKline, which stated that “a claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition disclosing the identical use,” citing a 1931 CCPA decision in which the patentee was aware of the method of use when the composition was originally disclosed. The dissent argued that Geneva should be limited to situations in which there would be “improper timewise extension of the patent right” (emphasis in original) and should not be extended to later-discovered uses. Here, there was no dispute that the gemcitabine’s anticancer effects were discovered after the filing of the original application disclosing gemcitabine. Thus, the dissent believed Lilly would have been entitled to a separate patent on the use of gemcitabine as an anticancer agent if it had not included the disclosure of anticancer use in the continuation-in-part.

In view of the “change in law” caused by applying Geneva to later-discovered uses and violation of “a vast body of precedent,” the dissenting judges concluded that en banc review was appropriate and necessary.