The Federal Circuit Further Clarifies The Obviousness-Type Double Patenting Doctrine For Composition Claims
By JOSEPH M. O'MALLEY, JR., ERIC W. DITTMANN, & ISAAC S. ASHKENAZI
On Friday, August 24, 2012, the Federal Circuit took another significant step in clarifying the law of obviousness-type double patenting as it relates to chemical-composition claims and continued its recent trend of treating obviousness and obviousness-type double patenting as largely the same analysis. See Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., No. 2011-1561 (Fed. Cir. Aug. 24, 2012). Read the decision here. In this decision, the Federal Circuit addressed issues that have been the subject of much discussion and litigation since at least Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 (Fed. Cir. 2003), and Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009), finding that, in an obviousness-type double patenting analysis involving chemical-composition claims: (1) a court must consider the claimed compositions in their entirety, rather than simply the relative differences between the two compositions; (2) except in limited circumstances, a court is not permitted to consider the specification of the earlier-issued patent; and (3) a court must take into account any objective indicia of nonobviousness.