Double patenting

Amgen v Teva has just been ruled in the US District Court of Delaware (copy of the ruling, dated January 7, 2011, here). Now it may be clear: cancellation action can’t be based on later-filed patents. Teva just thought it was worth a try.

US Patents involved are:

.- Patent No. 6,011,068. Application was filed on December 8, 1994. It was issued on January 4, 2000 and will expire on December 14, 2016 (the "'068 patent").

.- Patent No. 6,031,003. Application was filed on June 7, 1995. It was issued on February 29, 2000 and will expire on December 14, 2016 (the "'003 patent").

.- Patent No. 6,211,244. Application was filed on April 3, 2001. It was issued on April 3, 2001 and will expire on October 23, 2015 (the "'244 patent").

The argument:

“Defendants also argue that the court should invalidate
the '068 and '003 patents for obviousness-type double patenting over the '244 patent.

…

“Defendants' double patenting argument turns on the peculiar facts of this case. Because of the change in patent terms as of June 8, 1995, the '068 and '003 patents on the genera compounds will expire after the later-filed and later-granted '244 patent on the species. Defendants argue that the '068 and '003 patents impermissibly extend patent protection to cinacalcet beyond the term granted by the '244 patent. In support of their position, defendants rely on Ex Parte Pfizer, a decision from the Board of Patent Appeals and Interferences. No. 2009-4106, 2010 WL 532133, at *14-*24 (B.P.A.I. Feb. 12, 2010).

In Ex Parte Pfizer, the PTO reexamined a patent granted on medicinal compounds used to treat erectile dysfunction. The reexamined patent, the '012 patent, was filed prior to June 8, 1995 and expired in October 2019, seventeen years from its issue. The '012 patent claimed a treatment for erectile dysfunction through oral administration of a genus of compounds. Pfizer also owned two other patents, the '511 and '945 patents, the applications for which were filed after June 7, 1995. The '511 and '945 patents claimed treatment of erectile dysfunction through administration, oral or otherwise, of particular species of compounds within the genus of the '012 patent. The '511 and '945 species patents will expire October 2015, four years before the genus '012 patent will do so.

The Board of Patent Appeals and Interferences found that the '511 and '945 patents could serve as double patenting references for the '012 patent even though they issued later in time and expired earlier. The Board reasoned that the '012 patent prevented the public from practicing the art taught in the '511 and '945 patents beyond the terms of those two patents, which the Board argued is the purpose of the double patenting doctrine. In the Board's view, it is the patent term and not the issue date that determines whether a patent can be a double patenting reference. In a separate analysis, the Board found the oral administration claimed in the '012 patent obvious in light of the '511 and another Pfizer patent”.

How could this be explained? It is uncertain:

“The opinion does not explain why a later-issued patent with a shorter term should be used to abridge the term of a valid, earlier-granted patent with a longer term”.

Is there any American colleague out there that could bring us some light?.

Following documents could be useful (or bring more doubts):

.- Definition of Double Patenting by the USPTO here. In this document we read:

"In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).
...
If it is determined that the same invention is being claimed twice, 35 U.S.C. 101 precludes the grant of the second patent regardless of the presence or absence of a terminal disclaimer. Id".

.- Ex Parte Pfizer here.