United States: Obviousness-Type Double Patenting Does Not Require Common Ownership Or A Complete Identity Of Inventors

In In re Hubbell, No. 11-1547 (Fed. Cir. Mar. 7, 2013), the Federal Circuit affirmed the Board’s decision upholding the examiner’s final rejection of the claims of U.S. Application No. 10/650,509 (“the ’509 application”) for obviousness-type double patenting over U.S. Patent No. 7,601,685 (“the ’685 patent”).

The ’509 application is directed to the field of tissue repair and regeneration, and more specifically to matrices containing bidomain peptides or proteins.  The ’509 application and ’685 patent share Jeffrey Hubbell and Jason Schense as common inventors, but do not have identical inventive entities or common owners or assignees.  During prosecution, the examiner found that claims of the ’685 patent were directed to a species of the invention claimed in the ’509 application and therefore anticipated the ’509 application claims.  The examiner rejected the ’509 application claims for obviousness-type double patenting over the ’685 patent, and the Board affirmed the rejection.  The Board rejected Hubbell’s argument that common ownership is a requirement for obviousness-type double patenting, reasoning that obviousness-type double patenting applied because the ’685 patent and the ’509 application had two common inventors.

On appeal to the Federal Circuit, Hubbell argued that an obviousness-type double patenting rejection should not apply where an application and a conflicting patent share common inventors but do not have identical inventive entities, were never commonly owned, and are not subject to a joint research agreement.  Alternatively, Hubbell argued that he should be allowed to file a terminal disclaimer as an equitable measure, or that the Court should employ a two-way obviousness analysis for the rejected claims.

“[A]lthough Hubbell argues that we should create a specific exception barring application of obviousness-type double patenting in instances where the conflicting claims share only common inventors, rather than common ownership, we see no valid basis for doing so.”  Slip op. at 12.

The Federal Circuit first addressed whether obviousness-type double patenting applies where an application and a conflicting patent have one or more inventors in common but the inventive entities are not identical and the applications were never commonly owned.  The Court noted that the MPEP states that an obviousness-type double patenting may exist when an application and a conflicting patent have a “different inventive entity having a common inventor,” slip op. at 9 (quoting MPEP § 804(I)(A)), stating that while the MPEP is not binding, the Court can take judicial notice of it to the extent that it does not conflict with statutory text.  The Court further reasoned that the MPEP standard was consistent with the rationale for supporting an obviousness-type double patenting rejection.

The Court stated that it had previously rejected the contention that obviousness-type double patenting should never be applied in the absence of common ownership, citing In re Van Ornum, 686 F.2d 937 (CCPA 1982), and In re Fallaux, 564 F.3d 1313 (Fed. Cir. 2009).  The Court rejected Hubbell’s arguments that In re Van Ornum and In re Fallaux were distinguishable because they involved applications that were once commonly owned, and that the holdings should be limited to instances where the complaining party is responsible for the divided assignment.  The Court reasoned that the potential for harassment by multiple assignees would exist because an infringer could be subject to suit from both assignees.  The Court stated that it saw “no valid basis” for “creat[ing] a specific exception barring application of obviousness-type double patenting in instances where the conflicting claims share only common inventors, rather than common ownership.”  Slip op. at 12.  The Court found that the Board’s rejection was proper on the facts presented.

Next, the Court rejected Hubbell’s alternative argument that he should be allowed to file a terminal disclaimer as an equitable measure.  The Court stated that, “[a]s a general rule, a terminal disclaimer filed to overcome an obviousness-type double patenting rejection is effective only where the application and conflicting patent are commonly owned.”  Id. at 13 (citing In re Fallaux, 564 F.3d at 1319).  The Court found that the Cooperative Research and Technology Enhancement Act of 2004, which amended 35 U.S.C. § 103(c), did not apply “[b]ecause the ’509 application and the ’685 patent are not commonly owned and there is no joint research agreement between the assignees . . . .”  Id. at 14.

Finally, the Court rejected Hubbell’s argument that the Court should employ a two-way obviousness analysis, agreeing with the Board that “a two-way analysis is not applicable because Hubbell cannot establish that the PTO is solely responsible for any delays associated with the claims on appeal.”  Id. at 16.  The Court noted that it was undisputed that Hubbell was partially responsible for the delay that caused the ’685 patent claims to issue before the ’509 application claims, and that the examiner had previously allowed claims similar to those at issue but that Hubbell had let that application go abandoned.  The Court thus concluded that the Board properly affirmed the examiner’s rejection of the pending claims for obviousness-type double patenting over the ’685 patent.

Judge Newman dissented, opining that “double patenting does not apply when the application and patent are of separate ownership and have separate inventive entities.”  Newman Dissent at 1.  “In such situation the appropriate examination path is on the merits of the invention, or through the interference or derivation procedures, or other standard protocol as may apply in the particular situation.”  Id.  Judge Newman reasoned that “[t]he law of double patenting evolved in various factual situations, but never departed from the requirement of either common inventorship or common ownership, and never departed from the available remedy of terminal disclaimer for obviousness-type double patenting.”  Id. at 4.

This article previously appeared in Last Month at the Federal Circuit, April 2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.