IN RE HITACHI METALS, LTD. (Fed. Cir. 2015) (NP) – The specification may be used to infer correct claim scope of a patent for obviousness-type double patenting

by Steve Driskill | Mar 17, 2015 | [sub] obviousness-type, Double Patenting

Although the specification of an earlier patent may not be used as prior art in establishing obviousness-type double patenting of a later patent or application, it may nevertheless be used to infer the correct scope of the earlier patent’s claims for comparison...

PRESIDENT & FELLOWS OF HARVARD v. LEE (Fed. Cir. 2014) (NP) – A terminal disclaimer that purports to attach to all child applications will be honored

by Steve Driskill | Oct 29, 2014 | [sub] obviousness-type, [sub] terminal disclaimer, Double Patenting, PTO Procedure

A terminal disclaimer that purports to attach to all child applications will be honored. Here, for example, a terminal disclaimer in a parent application stating that it attaches to “any application which is entitled to the filing date of this application under 35...

ABBVIE INC. v. KENNEDY INST. OF RHEUMATOLOGY (Fed. Cir. 2014) (P) – Species are unpatentable over genus when skilled artisan can envision every member of the class

by Steve Driskill | Aug 21, 2014 | [sub] motivation, [sub] obviousness-type, Double Patenting, Obviousness

Although “[i]t is well-settled that a narrow species can be non-obvious and patent eligible despite a patent on its genus,” species are unpatentable when the prior art disclosures “describe the genus containing those species such that a person of ordinary skill in the...

GILEAD SCIENCES, INC. v. NATCO PHARMA LIMITED (Fed. Cir. 2014) (P) – Expiration dates control for obviousness-type double patenting inquiries

by Steve Driskill | Apr 22, 2014 | [sub] obviousness-type, Double Patenting

A patent that issues after but expires before another patent still qualifies as a double patenting reference for that other patent. This expiration-date centric analysis is a departure from the traditional issue-date centric analysis. “[L]ooking to patent issue dates...

ST. JUDE MEDICAL, INC. v. ACCESS CLOSURE, INC. (Fed. Cir. 2013) (P) – Divisional application safe harbor against double patenting

by Steve Driskill | Sep 11, 2013 | [sub] statutory, Double Patenting

The judicially-created “consonance” concept derives from the safe harbor’s “as a result of” requirement and specifies that the “line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained” in order for...

IN RE HUBBELL (Fed. Cir. 2013) (P) – Obviousness-type double patenting

by Steve Driskill | Mar 7, 2013 | [sub] obviousness-type, Double Patenting

Obviousness-type double patenting applies where an application and a conflicting patent have one or more inventors in common even if the inventive entities are not identical and even if the applications were never commonly owned. Further, when the application and...