Digest of Abbvie Inc. v. The Mathilda and Terrence Kennedy Institute of Rheumatology Trust, No. 2013-1545. (Aug. 21, 2014) (precedential). On appeal from S.D.N.Y. Before Dyk, Wallach, and Chen.
Procedural Posture: Patent holder appealed after district court granted declaratory judgment that the patent-at-issue was invalid for obviousness-type double patenting over an earlier patent. CAFC affirmed.
- Obviousness-type Double Patenting – Still Applies under the Uruguay Round Agreement Act (URAA):The patent holder argued that the doctrine of obviousness-type double patenting (ODP) no longer applies because, under the URAA, a patent’s expiration date is determined by the earliest priority date, not by the date of issuance. The judicially created ODP doctrine was created to prevent patentees from filing continuation “submarine” patents that claim previously disclosed but unclaimed features of an invention years after the filing date of an original patent application. When a patent’s expiration date depended on its date of issuance, a submarine patent could unlawfully extend a monopoloy on a single invention absent invalidation due to ODP. Under the URAA, such “submarine” patents would not expire later than the originally filed patent, and according to the patentee, the URAA therefore obviated the need to invalidate these patents due to ODP. The Federal Circuit clarified that the doctrine of ODP continues to be viable under the URAA because two patents that claim the same invention may still have different expiration dates. For example, a continuation patent may have a later expiration date than its parent patent if its prosecution was extended due to PTO delay. This case illustrates another example of two patents claiming the same (or obvious variants of the same) process while having different expiration dates because the later patent, while sharing the same specification with the earlier patent, claimed a later priority date.
- Obviousness-type Double Patenting: The Federal Circuit began its analysis by construing the claims of both the earlier patent and the later patent. The court assumed, without deciding, that the later patent claimed a narrower species of the genus claimed in the earlier patent, as argued by the patent holder. The court held that the patent was invalid even assuming the patent holder’s proffered claim construction because a person of skill in the art would have been able to envisage the species of the later patent’s claims in light of the genus disclosed by the earlier patent’s claims. Further, the patent holder’s claim of unexpected results for the later-claimed species did not apply under the court’s proper construction of a different claim term. Additionally, the court looked to the specification of the earlier patent to find that the results would have been expected, and clarified that looking to the earlier patent to determine whether the utility of the later patent was unexpected at the time of the earlier patent is proper in an ODP determination.