United States: Patent Properly Considered During Reexamination Results In Obviousness-Type Double Patenting Rejection

Judges: Newman (dissenting), Lourie (author), Linn

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In In re Basell Poliolefine Italia, S.P.A., No. 07-1450 (Fed. Cir. Nov. 13, 2008), the Federal Circuit affirmed the Board's rejection of all claims of Basell Poliolefine Italia, S.P.A.'s ("Bassell") U.S. Patent No. 6,365,687 ("the '687 patent") for obviousness-type double patenting in view of U.S. Patent No. 3,582,987 ("the '987 patent"). The Federal Circuit held that the application of a one-way obviousness-type double patenting analysis was proper and that the '987 patent was properly considered during reexamination.

The '687 patent is directed to the polymerization of unsaturated hydrocarbons. The pending claims generally involve polymerizing any alpha-olefin C4 or higher with any olefin (in some claims, specifi cally ethylene) using a titanium halide aluminum alkyl catalyst. The '687 patent issued from a chain of continuing patent applications, the first of which was filed in 1958. Shortly after the '687 patent issued in 2002, the PTO initiated a Director-ordered reexamination for all claims based on double patenting in view of two expired patents issued to one of the inventors of the '687 patent. During the course of reexamination, the examiner added double patenting rejections based on two other expired patents issued to the same inventor, one of which was the '987 patent.

The Board affirmed the double patenting rejections after concluding that the patentees were entitled to a one-way test for double patenting. The Board concluded that the patentees "significantly controlled the rate of prosecution throughout the chain of ancestor applications," and thus the one-way test applied. Slip op. at 3. The Board also reviewed new grounds of rejection based on anticipation and obviousness in view of U.S. Patent No. 3,058,963 ("the '963 patent"). The Board found that the patentees failed to establish that the '687 patent was entitled to the earlier filing date of a 1954 Italian application sufficient to antedate the '963 patent and, thus, the '963 patent was invalidating prior art.

In a second appeal, the Board affirmed the §§ 102(b) and 103(a) rejections based on the '963 patent and finalized all of the obviousness-type double patenting rejections. The Board held that, even though the PTO previously cited the '963 patent during examination of the '687 patent, the reference raised a substantial new question of patentability under § 303(a). Specifically, the Board found that, because "the examiner never fully considered the substantive issues of patentability of the claims over [the '963 patent] as a result of the incorrect assessment of the effective filing date," the citation of the '963 patent in the original examination did not bar rejections based on the same patent during reexamination. Id. at 4.

On appeal, the Federal Circuit focused on the obviousness-type double patenting rejection. The Court agreed with the Board that the claims of the '687 patent were unpatentable based on obviousness-type double patenting in view of the '987 patent. In so doing, the Court noted that the judicially created doctrine of obviousness-type double patenting "prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent." Id. at 6 (alteration in original) (quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001)).

The Court explained that in determining double patenting, a one-way test is normally applied, in which the examiner asks whether the application claims are obvious over the patent claims. Id. (citing In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998)). The Court further explained that in unusual circumstances, where an applicant has been unable to issue its first-filed application, a two-way test may apply, in which "the examiner also asks whether the patent claims are obvious over the application claims." Id. (quoting Berg, 140 F.3d at 1432). The Court found that those circumstances were not present here.

Specifically, the Court found that the patentees did not present any claim resembling the claims at issue until nine years after the inventor filed the first U.S. application in the chain of priority and well after the inventor filed the application that resulted in the '987 patent. The Court further found that those claims appeared to have been filed for interference purposes only. Moreover, the Court found that the patentee repeatedly submitted claims directed to claims covering other inventions, urged the examiner to declare interferences for unrelated inventions, and repeatedly filed continuing applications without appeal. The Court concluded that, during the critical copendent period of the applications for the '687 patent and the '987 patent, the inventor could have filed the claims at issue. Accordingly, the Court concluded that the inventor's actions (or inactions) had a direct effect on the prosecution and thus were responsible for any delay in prosecution. Accordingly, the Court agreed with the Board that the two-way test for double patenting does not apply.

The Federal Circuit next rejected Basell's assertion that the Board could not rely on the '987 patent because it was previously considered during the original prosecution. The Court found that the '987 patent was cited during the prosecution of a different patent application with claims that differed from the claims of the '687 patent in the catalysts they recited. Because the original rejection based on the '987 patent involved different claims than the claims at issue, the Court concluded that the Board was not precluded from relying on the '987 patent in its double patenting rejection. The Court further concluded that the double patenting rejection during the reexamination was made in 2004, thereby making it subject to the new statute and not the Court's holdings in In re Portola Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997).

Next, the Federal Circuit considered whether the claims of the '687 patent define an obvious variation of the claims of the '987 patent. The Court agreed with the Board that the claims of the '687 patent were not patentably distinct from claim 1 of the '987 patent. The Court found that, in essence, the claims of the two patents "consist of various permutations of polymerization of olefins with various numbers of carbon atoms using catalysts of titanium halides and aluminum alkyls." Slip op. at 11. Accordingly, the Court affirmed the Board's conclusion that the claims of the '987 patent rendered obvious the claims of the '687 patent and that the latter claims were invalid for obviousness-type double patenting. In so holding, the Court rejected Basell's contentions that the Board improperly read limitations from the '987 patent specification into the claims in concluding that the claims of the '687 patent were not patentably distinct. The Court also disagreed that the Board failed to consider the declaration evidence of its experts, finding that the Board expressly considered the declarations and found them unpersuasive.

The Court also rejected Basell's assertion that the double patenting rejection should be reversed because the Board failed to expressly conduct a full Graham analysis in determining that the '687 patent claims were an obvious variant of claim 1 of the '987 patent. The Court concluded that, although the Board failed to expressly set forth each of the Graham factors in its analysis, it carefully considered claim 1 of the '987 patent and the claims of the '687 patent in determining that a person of ordinary skill in the art would have found the '687 patent claims to have been obvious. Accordingly, the Court affirmed the Board's rejection of claims 1-52 of the '687 patent based on obviousness type double patenting in view of the '987 patent.

In a dissenting opinion, Judge Newman found that the June 2002 reexamination of the '687 patent was conducted in violation of the reexamination law as it then existed. Judge Newman explained that reexamination before § 303 was amended effective November 2, 2002, was available only on certain grounds not considered during the initial examination in order "to protect patentees from the harassment of too-facile reexamination." Newman Dissent at 2. Because the issue of double patenting had been considered during the initial examination, Judge Newman found the reexamination improper. Judge Newman also found that most of the delay between the initial filing and the issuance of the '687 patent was caused by the PTO's patent interference procedures. Finally, Judge Newman found that the PTO had consistently found that the claims of the '687 patent were patentably distinct from the claims of the '987 patent and that expert testimony reinforced this finding. For these reasons, Judge Newman concluded that, "in view of the recognition that the process in the '687 claims is patentably distinct from the '987 claims, double patenting can not lie." Id. at 7.

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