United States: Chief Judge Stark Denies Defendants' Motion For Judgment On Pleadings Seeking To Have Patent-in-Suit Ruled Invalid Or Terminally Disclaimed

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Novartis AG, et al. v. Ezra Ventures, LLC, Civil Action No. 15-150-LPS (D.Del. September 22, 2016), the Court denied Defendant's motion for judgment on the pleadings which argued that U.S. Patent No. 5,604,229 ("the '229 patent) should be ruled invalid, or otherwise terminally disclaimed for the time past the expiration date of unasserted U.S. Patent No. 6,004,565 ("the '565 patent).

Defendant's motion challenged the validity of the patent term extension ("PTE") of the '229 patent. Id. at *2.  Defendant argued that extension of the '229 patent, a compound patent, beyond the life of the '565 patent, a method patent, was impermissible because it:  (1) de facto extends the life of the '565 patent and, thus, violates the provision of 35 U.S.C. § 156 requiring that "in no event [may] more than one patent be extended  .  .  .  for the same regulatory review period for any product;" (2) violates the bedrock principle that the public may practice an expired patent; and (3) renders the '229 patent invalid for statutory and obviousness-type double patenting. Id. at *2-3.

The Court rejected Defendant's arguments finding that (1) the Federal Circuit's decision in Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 1323 (Fed. Cir. 2007) suggests that 35 U.S.C. § 156(c)(4) permits the "de facto" patent term extension to which Defendant objects; (2) the expiration of a patent does not grant the public an affirmative right to practice a patent – it merely ends the term of the patentee's right to exclude others from practicing the patent; and (3) the "same invention" and "obviousness" inquiries that are necessary for a double patenting analysis raise issues of fact that cannot be resolved at the judgment on the pleadings stage of the case. Id. at *3-6.  Accordingly, the Court concluded that Defendant's arguments did not provide a meritorious basis to grant it judgment on the pleadings.

A copy of the Memorandum Opinion is attached.

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