CAFC reverses DNJ on obviousness-type double-pateniting issue in Gilead v. Natco

In Gilead v. Natco, the CAFC addressed an issue
in obviousness-type double-patenting:



This appeal presents a narrow question: Can a patent
that issues after but expires before another patent qualify
as a double patenting reference for that other patent? We
conclude under the circumstances of this case that it can
and, therefore, that the district court erred in excluding
the ’375 patent as a potential double patenting reference
for the ’483 patent.


In terms of law, the CAFC mentioned Application of Robeson, which noted
that 35 U.S.C. § 253’s terminal disclaimer provision provided patent owners a
remedy against a double patenting charge by “permit[
ting] the patentee to cut back the term of a later
issued patent so as to expire at the same time as the
earlier issued patent.” Robeson, 331 F.2d at 614 n.4
(citing commentary of P.J. Federico).

The CAFC also noted: Indeed, as
our predecessor court later explained, a terminal disclaimer
“causes [such] . . . patents to expire together, a
situation . . . which is tantamount for all practical purposes
to having all the claims in one patent.” Application of
Braithwaite, 379 F.2d 594, 601 (CCPA 1967).

In this case, the defendant Natco asserted a defense of obviousness-type
double-patenting: Natco asserted that the ’483 patent was
invalid for obviousness-type double patenting in light of
claim 8 of the ’375 patent.

At district court, this defense failed: Relying on two district court cases, the court concluded
that “a later-issued but earlier-expiring patent” cannot
“serve as a double-patenting reference against an earlierissued
but later-expiring patent.” J.A. 7 (citing Abbott
Labs. v. Lupin Ltd., 2011 WL 1897322 (D. Del. May 19,
2011) and Brigham & Women’s Hosp. Inc. v. Teva Pharm.
USA, Inc., 761 F. Supp. 2d 210 (D. Del. 2011))

Of interest in this case, the two patents in this case are NOT part of the same patent family:


Despite their similarities in content, however, the ’375
and ’483 patents are not part of the same family of patents
and were not before the same patent examiner.
Instead, Gilead crafted a separate “chain” of applications,
having a later priority date than the ’375 patent family.
That separate chain resulted in the issuance of the ’483
patent. Because the patents do not claim priority to any
common application, they will expire at different times as
governed by the provisions of the Uruguay Rounds
Agreement Act. The ’375 patent was filed on February
26, 1996, and claims priority to a regular utility patent
application filed on February 27, 1995. It expires twenty
years later on February 27, 2015, and issued on September
14, 1999. The ’483 patent was filed on December 27,
1996, and claims priority to a provisional utility patent
application filed on December 29, 1995.



As to the terminal disclaimer,


After the ’483 patent issued, Gilead filed a terminal
disclaimer in the application that led to the ’375 patent.
Through it, Gilead disclaimed any portion of the ’375
patent term that extended beyond the expiration date of
the ’483 patent—which, absent abandonment, would not
occur since, as explained above, the ’375 patent’s expiration
date is before the ’483 patent’s expiration date. From
the prosecution history records, that appears to be the
first time Gilead informed either the examiner of the ’375
patent or of the ’483 patent about the existence of the
other patent application. No terminal disclaimer was
filed for the ’483 patent.



As to the law in this case:


And that principle is violated when a patent expires
and the public is nevertheless barred from practicing
obvious modifications of the invention claimed in that
patent because the inventor holds another later-expiring
patent with claims for obvious modifications of the invention.
5 Such is the case here. The ’375 patent expires on
February 27, 2015. Thus, come February 28, 2015, the
public should have the right to use the invention claimed
in the patent and all obvious variants of that invention.



In passing, footnote 3 erroneously discusses patents as giving
"rights to make." Patents are rights to exclude.
Footnote 3:


See also, e.g., Dastar Corp. v. Twentieth Century
Fox Film Corp., 539 U.S. 23, 33-34 (2003) (“The rights of a
patentee . . . are part of a carefully crafted bargain . . .
under which, once the patent . . . monopoly has expired,
the public may use the invention . . . at will and without
attribution.” (internal quotation marks and citations
omitted)); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S.
225, 230 (1964) (“[W]hen the patent expires the monopoly
created by it expires, too, and the right to make the article
. . . passes to the public.”); Miller v. Eagle Mfg. Co., 151
U.S. 186, 197-98 (1894) (explaining history of and collecting
cases on double patenting);



CJ Rader dissented. He concluded:


As a final point, I think a number of concerns counsel
for a more restrained approach. Chief among those is the
interplay between today’s decision and the new “firstinventor-
to-file” provision of the Leahy-Smith America
Invents Act, Pub. L. No. 112–29 § 3, 125 Stat. 285–86
(2011) (“the AIA”). Under the AIA’s new “first-inventorto-
file” framework, prospective patentees are under
tremendous pressure to file their applications early. I am
concerned that today’s opinion will have unforeseen
consequences in this new race to the Patent Office.