Thursday, August 21, 2014

CAFC explores double-patenting in Abbvie v. Kennedy Institute; Kennedy loses.

In Abbvie v. Kennedy Institute;, Judge Dyk gives an expansive review of double-patenting.

We now make explicit what was implicit in Gilead:

the doctrine of obviousness-type double patenting contin-
ues to apply where two patents that claim the same invention
have different expiration dates.
We hold that Kennedy is not entitled to an extra six
years of monopoly solely because it filed a
separate application unless the
two inventions are patentably distinct.

The concept of a dominating patent arose:

To be sure, obviousness is not demonstrated merely
by showing that an earlier expiring patent dominates
a later expiring patent. Nor do we think that the district
court here relied on any such principle.
It is well -settled that a narrow species can be non-
obvious and patent eligible despite a patent on
its genus. See Eli Lilly & Co.
v. Bd. of Regents of Univ. of Wash.
, 334 F.3d 1264, 12 70 (Fed. Cir. 2003) ;
In re Kaplan, 789 F.2d 1574, 1577 78
(Fed. Cir. 1986); In re Sarett
, 327 F.2d 1005, 1014 (CCPA 1964); 3A
Donald S. Chisum, Chisum on Patents § 9.0 3

But not every species of a patented genus is separate-
ly patentable.

First, when a “genus is so limited that a person of
ordinary skill in the art can ‘at once envisage each member of this limit
ed class,’ . . .a reference describ-
ing the genus anticipates every species within the genus.”
In re Gleave, 560 F.3d 1331, 1337-38 (Fed. Cir. 2009)
(quoting Eli Lilly & Co. v. Zenith Goldline Pharms
., Inc.,471 F.3d 1369, 1376 (Fed. Cir. 2006),and citing
Perricone v. Medicis Pharm. Corp.
, 432 F.3d 1368, 1377 (Fed. Cir. 2005));
see also Bristol-Myers Squibb Co. v. Ben Venue
Labs., Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001)

Bottom line: Kennedy loses.

we conclude that the ’442 patent is invalid for
obviousness-type double patenting in light of the ’766


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