September 2014

Spotlight Info

In AbbVie Inc. v. Mathilda & Terence Kennedy Institute of Rheumatology Trust, No. 13-1545 (Fed. Cir. Aug. 21, 2014), the Federal Circuit affirmed the district court’s finding of obviousness-type double patenting.  The Mathilda and Terence Kennedy Institute of Rheumatology Trust (“Kennedy”) argued, inter alia, that the statutory and policy rationales—specifically, the problem of “submarine” patents—for the doctrine of obviousness-type double patenting no longer exist; thus, the doctrine should be discarded.  Slip op. at 11.  The Federal Circuit, however, disagreed, explaining that Kennedy ignored that the doctrine is also designed to prevent inventors from obtaining a second, later expiring patent on the same invention, which is another “crucial purpose of the doctrine.”  Id.  Noting its recent decision in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), the Court stated, “We now make explicit what was implicit in Gilead:  the doctrine of obviousness-type double patenting continues to apply where two patents that claim the same invention have different expiration dates.”  Slip op. at 13.  Indeed, the Court explained, “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.”  Id.  See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.