Intellectual Property Law

Judge Sleet decides issue of first impression: Do the prior art rules of the Patent Act apply to defendants? obviousness-type double patenting defense?

By Karen E. Keller, Andrew A. Lundgren et al.

In Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., C.A. 08-335-GMS (D. Del. Nov. 5, 2010), Judge Sleet recently decided an issue of first impression -- what is the date the court should use to determine what constitutes prior art for purposes of defendants? obviousness-type double patenting defense? Plaintiffs argued that while 35 U.S.C. § 102 governed what references constituted prior art, § 102 did not resolve ?for purposes of an obviousness-type double patenting (?OTDP?) analysis the question . . . in light of the prior art as of what date?? Id. at 2 (emphasis in original). Judge Sleet rejected plaintiffs? distinction between ?the questions of ?what? and ?when?? because adopting plaintiffs? argument would ?require the court to view some portions of [§ 102] as controlling while viewing others as irrelevant in the OTDP context.? Id. If the Federal Circuit intended such a result ? excepting prior art in the OTDP context from the rules found in § 102 ? it would have done so explicitly. Id. at 4-5.

Eli Lilly and Co. v. Teva Parenteral Medicines, Inc., C.A. 08-335-GMS (D. Del. Nov. 5, 2010)

Full post as published by Delaware IP Law Blog on November 09, 2010 (boomark / email).