Geneva Pharmaceuticals haunts Sun Pharma case on double-patenting

The dissent in Sun Pharma noted:

The panel apparently was misdirected by an overly-
broad statement in Geneva Pharmaceuticals, Inc. v.
GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003).
Geneva stated that “[o]ur predecessor court recognized that
a claim to a method of using a composition is not patentably
distinct from an earlier claim to the identical composition in
a patent disclosing the identical use.” Id. at 1385–86. The
court cites a 1931 decision, In re Byck, 48 F.2d 665, 666
(CCPA 1931), in which the court stated:

It would shock one’s sense of justice if an inventor
could receive a patent upon a composition of matter,
setting out at length in the specification the useful
purposes of such composition, manufacture and sell
it to the public, and then prevent the public from
making any beneficial use of such product by secur-
ing patents upon each of the uses to which it may be
adapted.

The Geneva decision does not mention Byck’s further state-
ment that the patentee “might have disclosed a use of the
invention which, together with other elements, might have
constituted a separate invention for which he would be
entitled to a patent. This, we hold, he did not do, in view of
the [prior art] Baekeland reference.” Id. at 667. However,
as in this case, there is no “shock” to “one’s sense of justice”
where the non-obvious, later-claimed use is the result of a
later discovery. Yet the statement in Geneva took on a life
of its own, as in Pfizer, Inc. v. Teva Pharmaceuticals USA,
Inc., 518 F.3d 1353 (Fed. Cir. 2008), where the court de-
clined to apply section 121 (negating double patenting
among divisionals) and found double patenting despite restriction requirement, citing for authority.