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Obviousness-Type Double Patenting Applies Without Common Ownership: Federal Circuit
Practical Law Legal Update 1-525-0333 (Approx. 5 pages)
Obviousness-Type Double Patenting Applies Without Common Ownership: Federal Circuit
by PLC Intellectual Property & Technology
| Published on 12 Mar 2013 • USA (National/Federal) |
On March 7, 2013, the US Court of Appeals for the Federal Circuit affirmed the USPTO Board of Patent Appeals and Interferences' ruling that pending patent claims may be barred under the doctrine of obviousness-type double patenting, even where there is no common ownership with a patent.
Key Litigated Issue
The key litigated issue in this appeal was whether obviousness-type double patenting should apply where the application and the conflicting patent:
- Share common inventors, but not identical inventive entities.
- Were never commonly owned.
- Were not subject to a joint research agreement.
Background
The two patents in this appeal are:
The '509 patent application concerns matrices containing bidomain peptides or proteins. The named inventors on the '509 patent are Jeffrey Hubbell, Jason Schense, Andreas Zisch and Heike Hall, who were all affiliated with the California Institute of Technology (CalTech). Because all of the named inventors were affiliated with CalTech, the '509 application was assigned to CalTech. The '509 patent was filed in 2003.
In 1999, before the '509 application was filed, Dr. Hubbell left CalTech to join Eidgenossische Technische Hochschule Zurich (ETHZ). Hubbell and Schense conducted research at ETHZ, resulting in the '685 patent. The '685 patent was issued in 2009 with Hubbell, Schense and Shelly Sakiyama listed as inventors. The '685 patent is jointly assigned to ETHZ and Univesitat Zurich.
The USPTO examiner rejected certain claims of the '509 application for obviousness-type double patenting, finding that the conflicting claims in the '685 patent encompassed, and therefore anticipated, the claimed invention.
On appeal to the Board of Patent Appeals and Interferences (BPAI), the BPAI affirmed the examiner's rejection based on obviousness-type double patenting. Specifically, the BPAI found that claim 1 of the '685 patent recites a protein that contains both of the features required in rejected claim 18. The BPAI also rejected Hubbell's argument that common ownership is a requirement for obviousness-type double patenting. Hubbell appealed to the Federal Circuit.
Outcome
In a 2-1 decision, the Federal Circuit held that:
- The BPAI properly affirmed the USPTO examiner's decision rejecting the pending application claims based on obviousness-type double patenting considering the '685 patent.
- Hubbell is not entitled to a terminal disclaimer on either a statutory basis or as an equitable measure.
- A two-way obviousness analysis does not apply because the USPTO was not solely responsible for the delay in causing the '685 patent to issue before the application claims of the '509 application under appeal.
Obviousness-Type Double Patenting
Courts created the obviousness-type double patenting doctrine to prevent claims in separate applications or patents that while they do not recite the same invention, claim inventions so similar that granting both exclusive rights would effectively extend the patent protection life. The two justifications for obviousness-type double patenting are to prevent:
- An unjustified extension of the right to exclude granted by a patent.
- Different assignees from pursuing multiple infringement suits that assert essentially the same patented invention.
On appeal, Hubbell did not dispute that claim 1 of the '685 patent anticipates claim 18 of the '509 application. Rather, he argued that obviousness-type double patenting should not apply where the application and conflicting patent:
- Share one or more inventors in common.
- Do not have identical inventive entities.
- Were never commonly owned.
- Were not subject to a joint research agreement.
The court rejected Hubbell's argument and agreed with the BPAI's finding that obviousness-type double patenting applied because:
- The Manual of Patent Examining Procedure specifically contemplates application of obviousness-type double patenting in these circumstances.
- Prior case law supports application of obviousness-type double patenting in instances where there is no common ownership.
In agreeing with the BPAI, the court rejected Hubbell's request to require a complete identity of inventors or common ownership as a prerequisite to an obviousness-type double patenting rejection.
Terminal Disclaimer and Two-Way Obviousness
In the alternative, Hubbell argued he should be authorized to file a terminal disclaimer to avoid a conflict with the '685 patent. The court held that Hubbell did not meet the statutory qualifications for a terminal disclaimer because there was no common ownership or joint research agreement. The court also declined to create a new equitable right in allowing him to file a terminal disclaimer.
The court declined Hubbell's argument to reconsider the rejected claims under a two-way obviousness analysis. The two-way test is used only when the USPTO is solely responsible for the delay in causing a second-filed application to issue before a first application. While the after-filed '685 patent issued before the application claims on appeal, the court found that Hubbell was partially responsible for the delay that caused the '685 patent to issue first.
Dissent
Judge Newman wrote a dissent in which he argued that the majority ruling finding double patenting runs contrary to statute and precedent. Discussing the legal development of double patenting, he reasoned that either common ownership or common inventorship have and should remain a requirement for double patenting. In his view, the standard examination practices focused on the merits of the invention, and including interface or derivation procedures where appropriate, are sufficient to determine patentability. The dissent also argued that where there is obviousness-type double patenting, then a terminal disclaimer should be made available.
Practical Implications
In re Hubbell demonstrates the Federal Circuit's unwillingness to require a complete identity of inventors or common ownership as a prerequisite to an obviousness-type double patenting rejection.