The patentee alleged infringement of a series of patents related to methods and devices for vascular procedures. The patent group that was the Federal Circuit’s main focus descended from a grandparent on which the Examiner Action had placed requirements for elections of (i) either a device or method, and (ii) a species. The patentee’s elections led to the issuance of the grandparent patent, which included no generic claims. Patentee later filed two continuations from which two patents issued. In the first-filed continuation application (the patent asserted against defendant), patentee elected different species from the grandparent application. In the sibling application (which was not asserted), however, the patentee pursued a generic claim. Patents issued on both filings, but the sibling application issued earlier because the first-filed continuation application was involved in an interference proceeding. The alleged infringer raised a double-patenting defense over the sibling application challenging the asserted patent’s claims.

The district court held that there was no double-patenting because the safe harbor provision of 35 U.S.C. § 121 applied. Noting that the safe harbor provision is “not a model of clarity,” the Federal Circuit reversed.

The asserted claims violated consonance, which allows the safe harbor provision to defeat double-patenting defenses only when “the challenged patent, the reference patent, and the patent in which a restriction requirement was imposed . . . do not claim any of the same inventions identified by the examiner.” But the Examiner Action had not just imposed a device/method restriction—it had imposed a restriction as to species that also required consonance among descendant patents. Because the sibling patent application pursued a generic claim that overlapped with the challenged patent’s elected species, there was no consonance among the sibling, the challenged, and the grandparent patents. Thus, the claims of the asserted patent that were not patentably distinct from the claims of the sibling patent were held to be invalid.

A copy of the opinion can be found here.