Intellectual Property Law

N.J. Chief Judge Bartle: Amgen Patents Not Invalid after Bench Trial

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

Earlier this month, in Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464 (D. Del. Jan. 7, 2011), Chief Judge Bartle, sitting by designation from the District of New Jersey, issued a memorandum opinion addressing several invalidity issues raised during a three-day bench trial, including inequitable conduct, anticipation, and obviousness-type double patenting. The Court rejected all of Defendants' invalidity grounds, and held that the patent claims at issue were not invalid.

The opinion addresses an interesting obviousness-type double patenting claim. Because the patents at issue straddled the June 8, 1995 patent term change, Plaintiff's later-filed and later-granted patent will expire before its two earlier-filed patents that covered a broader subject matter. Id. at 24. Defendants argued that the earlier-filed, broader patents should be invalidated under obviousness-type double patenting because they unjustly extend protection over the narrower subject matter of the later-filed, but earlier-expiring patent. Despite some precedent for this theory (a Board of Patent Appeals and Interferences opinion), the Court rejected it, holding that "the later-filed, later-issued . . . patent could not and did not create an 'unjustified timewise extension' of the earlier-filed, earlier-issued . . . patents." Id. at 27 (quoting In re Schneller, 397 F.2d 350, 354 (C.C.P.A. 1968)).

Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 08-464 (D. Del. Jan. 7, 2011)

Full post as published by Delaware IP Law Blog on January 28, 2011 (boomark / email).