March 2013 In a 2-1 decision in In re Hubbell, No. 11-1547 (Fed. Cir. Mar. 7, 2013), the Federal Circuit affirmed a determination by the Board upholding the rejection of the claims of U.S. Application No. 10/650,509 (“the ’509 application”) for obviousness-type double patenting over U.S. Patent No. 7,601,685 (“the ’685 patent”). The ’509 application and the ’685 patent are directed to the field of tissue repair and regeneration, and more specifically to matrices containing bidomain peptides or proteins.
During prosecution, the examiner determined that the conflicting claims in the ’685 patent were directed to species of the claimed invention of the ’509 application and therefore anticipated the claimed invention of the ’509 application. The Board affirmed the obviousness-type double patenting rejection over the ’685 patent.
On appeal before the Federal Circuit, Appellants argued that obviousness-type double patenting should not apply where an application and a conflicting patent share common inventors but do not have identical inventive entities, were never commonly owned, and are not subject to a joint research agreement. Alternatively, Appellants argued that they should be allowed to file a terminal disclaimer as an equitable measure, or that the Court should employ a two-way obviousness analysis for the rejected claims.
The majority rejected both arguments and affirmed the Board’s determination. Judge Newman dissented. Watch for the complete case summary in the next edition of Last Month at the Federal Circuit.
Looking Ahead
