[A] complete identity of inventors or common ownership [is not] a prerequisite to an obviousness-type double patenting rejection.
On March 7, 2013, in In re Hubbell, the U.S. Court of Appeals for the Federal Circuit (Newman, O'Malley* Wallach) affirmed the USPTO Board of Patent Appeals and Interferences decision upholding the patent examiner's rejection of the claims of U.S. patent application Serial No. 10/650,509, which related to tissue repair and regeneration involving matrices containing bidomain peptides or proteins, for obviousness-type double patenting over several patents, including U.S. Patent No. 7,601,685. The Federal Circuit stated:
Obviousness-type double patenting is a judicially-created doctrine designed to "prevent claims in separate applications or patents that do not recite the 'same' invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection." It prohibits the issuance of claims in a second patent that are "not patentably distinct from the claims of the first patent." A later patent claim "is not patentably distinct from an earlier claim if the later claim is obvious over, or anticipated by, the earlier claim." There are two justifications for obviousness-type double patenting. The first is "to prevent unjustified time-wise extension of the right to exclude granted by a patent no matter how the extension is brought about." The second rationale is to prevent multiple infringement suits by different assignees asserting essentially the same patented invention. . . .
It is undisputed that the '685 patent is assigned to ETHZ and Universitat Zurich, whereas the '509 application is assigned to CalTech. While Hubbell is correct that CalTech was not responsible for the bifurcated assignment, the fact remains that, if Hubbell's rejected application claims were to issue, the potential for harassment by multiple assignees would exist because an infringer of claim 1 of the '685 patent would also infringe at least rejected claim 18. As such, there is a risk that a potential infringer could be subject to suit from both CalTech and ETHZ and Universitat Zurich under their respective patents. The fact that Hubbell controlled the assignment by moving from one institution to another does not alter this analysis. [W]hether the applications that led to the issued patents were ever commonly owned is irrelevant." [T]he harassment justification is "particularly pertinent" in cases where, as here, the application and the conflicting patent are not commonly owned. [A]lthough Hubbell argues that we should create a specific exception barring application of obviousness-type double patenting in instances where the conflicting claims share only common inventors, rather than common ownership, we see no valid basis for doing so. Because it is undisputed that an infringer of the '685 patent would also infringe the '509 application, the multiple assignee harassment justification [applies] despite the lack of common ownership. . . .
Hubbell also seems to argue that obviousness-type double patenting should not apply where the overlap in inventorship is not complete, i.e., where the inventive entities are not identical in all respects. Here, Hubbell was the first named inventor on both the '590 application and the '685 patent and Schense was the second. The '509 had two other named inventors and the '685 patent had one. It is undisputed that this overlap in inventorship is precisely the type of relationship that would give rise to double patenting under the MPEP. Hubbell does not explain why the MPEP is wrong to treat cases, like his, where the overlap in inventorship is substantial any differently than cases where the overlap is complete. We too can find no reasoned basis to differentiate between cases involving identical "inventive entities" and those where the inventive entities are almost identical when assessing obviousness-type double patenting rejections. For these reasons, we reject Hubbell's request that we insist upon a complete identity of inventors or common ownership as a prerequisite to an obviousness-type double patenting rejection and find the Board's rejection to have been proper on the facts presented here.
In the alternative, Hubbell argues that, if obviousness-type double patenting does apply, we should authorize him to file a terminal disclaimer and thus avoid any concern regarding undue extension of the rights granted in the '685 patent. As a general rule, a terminal disclaimer filed to overcome an obviousness-type double patenting rejection is effective only where the application and conflicting patent are commonly owned. . . . Recognizing that there is neither common ownership nor a common assignee here, Hubbell points to the Cooperative Research and Technology Enhancement Act of 2004 ("the CREATE Act"), which amended 35 U.S.C. § 103(c) to provide that otherwise unrelated persons can be treated as common owners under the statute if: (1) they are parties to a joint research agreement that was in effect on or before the claimed invention was made; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) "the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement."
Because the '509 application and the '685 patent are not commonly owned and there is no joint research agreement between the assignees, Hubbell's reliance on the CREATE Act is misplaced. Although Hubbell argues that this court should ignore the joint research agreement requirement and nonetheless permit the filing of a terminal disclaimer, there is no statutory basis for doing so, and we decline Hubbell's invitation to rewrite the statutory text by creating a new equitable right to resort to terminal disclaimers. We conclude that, because Hubbell does not qualify for a terminal disclaimer under the statute, he is not entitled to file one as an equitable measure.