Retroactive Terminal Disclaimer Cannot Cure Obviousness-Type Double Patenting

Boehringer Ingelheim Int’l GMBH v. Barr Labs., Inc., No. 2009-1032 (Fed. Cir. Jan. 25, 2010)

Holding:

A terminal disclaimer filed after the expiration of the earlier patent (“retroactive terminal disclaimer") over which claims have been found obvious cannot cure obviousness-type double patenting. Slip op. at 12.

The § 121 safe-harbor provision may apply to a divisional of a divisional of the application in which a restriction requirement was entered. Id. at 20.

The § 121 “as a result of” requirement applies to the challenged patent as well as the reference patent. Id. at 21.

Relevant Facts:

The reference patent application was a divisional of the challenged patent application, which in turn was a divisional of the parent application that was subject to a restriction requirement. Later, the patentee filed a retroactive terminal disclaimer to overcome obviousness-type double patenting. The Federal Circuit agreed with the district court that the retroactive terminal disclaimer cannot cure obviousness-type double patenting. The patentee also argued that the safe-harbor provision of 35 U.S.C. § 121 prevents the reference patent to be used as a reference. The Federal Circuit reversed the district court’s ruling that the safe-harbor provision of 35 U.S.C. § 121 does not apply in this case, and remanded the case back to the district court.

Comments:

Note that the Federal Circuit explained when a retroactive disclaimer cannot cure obviousness-type double patenting:

By failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage—a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified time wise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with “[t]he fundamental reason” for obviousness-type double patenting, namely, “to prevent unjustified timewise extension of the right to exclude.”

Slip op. at 12 (note: due to formatting issues, original underlines have been replaced with italics.).

Also, section 121 provides in relevant part:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application . . . .

35 U.S.C. § 121 (emphasis added).

Judgment of Invalidity Prevents Cross-Appeal for Claims of Non-Infringement

Therasense, Inc. v. Beckton, Dickinson and Co., No. 2009-1008, -1009, -1010, -1034, -1035, -1036, -1037 (Fed. Cir. Jan. 25, 2010)

Holding:

Having obtained a judgment of invalidity as to all of the asserted claims, the accused infringer has no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of non-infringement. Slip op. at 18.

Relevant Facts:

The patentee appealed the judgment of invalidity based on an erroneous jury instruction. Slip op. at 6. Although the Federal Circuit agreed that certain instructions regarding anticipation were legally incorrect, it found that the errors had no prejudicial effect because the asserted claims were obvious. Id. at 17. The accused infringer crossed appealed the jury’s finding of infringement, but the Federal Circuit ruled that the cross-appeal was improper. Id. at 18.

Comments:

Note that the Federal Circuit explained when the cross-appeal is improper:

As our decision in Bailey v. Dart Container Corp. of Michigan, 292 F.3d 1360 (Fed. Cir. 2002), makes clear, “[i]t is only necessary and appropriate to file a cross-appeal when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment.” Id. at 1362. Thus, a cross-appeal is proper only when “acceptance of the argument it wishes to advance would result in a reversal or modification of the judgment rather than an affirmance.” Id. “Where, as here, the district court has entered a judgment of invalidity as to all of the asserted claims, there is no basis for a cross-appeal as to either (1) additional claims for invalidity or (2) claims of non-infringement.” TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004) (emphasis added).

Slip op. at 18 (note: due to formatting issues, original underlines have been replaced with italics.).

Inequitable Conduct: Merely Disclosing Documents that Contradict a Patentee’s Deceptive Declaration Does Not Obviate the Patentee its Duty of Candor

Therasense, Inc. v. Beckton, Dickinson and Co., No. 2008-1511, -1512, -1513, -1514, -1595 (Fed. Cir. Jan. 25, 2010)

Holding:

Merely disclosing documents that contradict the patentee’s deceptive declaration does not obviate the patentee its duty to avoid intentional deception in the declaration before the PTO. Slip op. at 31.

To render a claim obvious, the cited prior art as a whole must enable one skilled in the art to make and use the apparatus or method. For anticipation, however, an individual prior art reference need not be enabled and qualifies as a prior art for its disclosure. Id. at 12.

Relevant Facts:

The patents-in-suit are directed to disposable blood glucose test strips. The Federal Circuit affirmed the district court’s ruling that (1) that claims 1–4 of U.S. Patent No. 5,820,551 were invalid due to obviousness and that the entire ’551 patent was unenforceable due to inequitable conduct, (2) all asserted claims in U.S. Patent Nos. 6,143,164 and 6,592,745 were not infringed, and (3) nearly all of the asserted claims of the ’745 patent invalid due to anticipation. Slip op. at 2-3. Specifically with regard to inequitable conduct, the patentee made contradicting statements before the PTO and the EPO. Although the patentee submitted the EPO documents to the PTO, the patentee also submitted a deceptive declaration to the PTO. Id. at 31.

Comments:

It appears that the Federal Circuit is more likely to find inequitable conduct in two main situations: (1) failure to cross-cite material references in related pending applications, and (2) submitting a deceptive declaration. Other than these two situations, it is more difficult for the challenger to convince the Federal Circuit that the patentee committed inequitable conduct during prosecution.

The Originating Disclosure Should Be Used to Construe Claim Terms in a Written Description Challenge in Interference Proceedings

Koninklijke Philips Electronics N.V. v. Cardiac Sci. Operating Co., No. 2009-1241 (Fed. Cir. Jan. 5, 2010)

Holding:

When a party challenges written description support for the copied claim in interference proceedings, the originating disclosure provides the meaning of the pertinent claim language. Slip op. at 14.

In contrast, when a party challenges a claim’s validity, the claims are interpreted in light of the specification in which they appear. Id.

Relevant Facts:

Cardiac Science invoked the interference by copying certain claims from Philips’ earlier patent to its application. The BPAI denied several Philips’ motions and awarded priority to Cardiac Science’s patent application. Philips sought the review of the BPAI’s decision in a district court, but the district court later dismissed Philips’s civil suit sua sponte. Philips appealed and the Federal Circuit reversed and remanded the case back to the district court. The main dispute is which specification should be used to construe claim meanings when Philips challenged that Cardiac Science’s copied claims lack written description support.

Comments:

The Federal Circuit reiterated its holdings in Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) and In re Spina, 975 F.2d 854 (Fed. Cir. 1992). In patent inference proceedings, the original specification is relevant to a written description support challenge, while the specification in which the claims appear is relevant to a validity challenge. Note that without written description support, the inference proceeding cannot go forward.