Patent Law Weblog
Category: Double Patenting
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By Kevin E. Noonan — A three judge Federal Circuit panel went a long way towards disentangling its jurisprudence on the question of obviousness-type double patenting, in affirming a District Court finding that the doctrine did not apply to the patent claims at issue in Eli Lilly & Co. v. Teva. In what seems to…
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By Andrew Williams — On Monday, in Otsuka Pharmaceutical Co. v. Sandoz, Inc., the Federal Circuit clarified the differences between obviousness and obviousness-type double patenting for a chemical composition-of-matter invention. Specifically, a new chemical compound is prima facie obvious if (1) a chemist of ordinary skill would have selected prior art compounds as a lead…
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By Kevin E. Noonan — The Supreme Court refused today to grant certiorari in Eli Lilly & Co. v. Sun Pharmaceutical Industries, Ltd. on the question of obviousness-type double patenting. In doing so, the Court let stand precedent that seriously expands the scope of the obviousness-type double patenting standard, turning a legal principle that was…
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By Kevin E. Noonan — The Washington Legal Foundation (WLF), a self-styled "non-profit public interest law and policy center that regularly appears before federal and state courts to promote economic liberty, free enterprise, and a limited and accountable government," filed an amicus curiae brief on September 8th, urging the Federal Circuit to rehear en banc…
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By Kevin E. Noonan — The old proverb "success has many fathers, while failure is an orphan" comes to mind when considering the Federal Circuit's decision in Eli Lilly & Co. v. Teva Pharmaceuticals USA, Inc. In the Court's decision, repeated failures, even by Lilly scientists in developing its osteoporosis drug Evista® (raloxifene hydrochloride), were…
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By Andrew Williams — On Wednesday, in Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., the Federal Circuit affirmed a finding that claims of Lilly's U.S. Patent No. 5,464,826 ("the '826 patent) were invalid for obviousness-type double patenting over U.S. Patent No. 4,808,614 ("the '614 patent"). The '614 patent claims gemcitabine, and methods of…
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By Kevin E. Noonan — On Monday, the U.S. Patent and Trademark Office granted an ex parte reexamination request for U.S. Patent No. 5,925,803, the latest-filed and last-granted member of the Harvard Oncomouse patent family. Remarkable about the petition is that the third party requester (TPR), Ellen Gonzales of Gonzales Patent Services, contends that…
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The Metes and Bounds of Obviousness-type Double Patenting By Kevin E. Noonan — Obvious-type double patenting has become an important issue in patent litigation (Amgen Inc. v. F. Hoffman-La Roche Ltd., Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., Proctor & Gamble Co. v. Teva Pharmaceuticals USA, Inc.) and in the Patent Office (In re…
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By Kevin E. Noonan — Although Amgen's erythropoietin franchise has weathered its most recent challenge by F. Hoffmann-La Roche's pegylated EPO analog, Mircera® (see Amgen Inc. v. F. Hoffman-La Roche Ltd. (Fed. Cir. 2009)), the victory was not absolute. The status of three of the patents-in-suit — U.S. Patent Nos. 5,547,933 (the '933 patent), 5,955,422…
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Something for Everyone, but the Injunction Stands By Kevin E. Noonan — Amgen has several times successfully defended its erythropoietin (EPO) franchise, the company's first commercial success and in many ways the crown jewel of its (or anyone's) biologics drug pipeline. That string of successes continued today with a decision by the Federal…
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