Archive for the ‘Double Patenting’ Category

In Re Hubbell

Wednesday, March 20th, 2013

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.


Supreme Court Denies Cert. In Lilly V. Sun

Tuesday, May 17th, 2011

In my post of May 6, 2011, I discussed the facts in some detail in this controversial Fed. Cir. decision cialis for sale

nts/BIO_amicus_brief_Sun_v_Lilly.pdf”>(611 F.3d 1381 (Fed. Cir. 2010) and concluded that the majority of the Fed. Cir. got this one wrong – the court voted 5-4 to deny rehearing en banc. Although Lilly had prosecution strategies available that would have avoided invalidation of their patent on a newly discovered use of gemcitabine, Lilly picked the wrong one. All practitioners should re-read this decision so as to not fall into the same trap. Ironically, this is an appeal in which Supreme Court review likely would have helped the patent system.