Guest post by Theresa Stadheim of Schwegman Lundberg & Woessner)
In In Re Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall, Appeal No. 2011-1547 (Fed. Cir. March 7, 2013) (a copy can be found at the end of this post), the Federal Circuit affirmed a Board of Patent Appeals and Interferences (BPAI) decision that claims of U.S. Patent Application No. 10/650,509 (the ‘509 application”) were obvious under the doctrine of obviousness-type double patenting.
The invention disclosed in the ‘509 application was based on research by Jeffrey Hubbell and Jason Schense while they were employed at California Institute of Technology (“CalTech”). The ‘509 application was assigned to CalTech. Hubbell left CalTech and joined the faculty of Eidgenossische Technische Hochschule Zurich (“ETHZ”) five years before the ‘509 application was filed. An application that later issued as patent number 7,601,685 (“the ‘685 patent”) was based on research by Hubbell and Schense at ETHZ. The ‘695 patent was assigned to ETHZ and Universitat Zurich. The ‘509 application was rejected by the Examiner for obviousness-type double patenting over the ‘685 patent and other patents. (A copy of the ‘509 application as published and the ‘685 patent can be found at the end of this post). The BPAI affirmed the rejection, rejecting Hubbell’s argument that common ownership is required for obviousness-type double patenting.