Home -> Law Blog Directory -> Patent Law Blogs -> IPBiz

Patent Law

: IPBiz

Is being pro-active a good thing?

By Lawrence B. Ebert, Esq.

Patent Docs has an interesting post on the relevance of 35 USC 121 (which immunizes divisionals against obviousness-type
double patenting rejections) to the Mircera matter between Amgen and Hoffman:

The Federal Circuit's decision in Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc. (issued March 7, 2008; see Patent Docs report) has raised another potentially-dispositive issue, not on the injunction but on the validity of Amgen's patents-in-suit, and Amgen has responded proactively. On March 14th, Amgen filed a bench memorandum with the District Court explaining its understanding of the Pfizer decision, and arguing that this decision has no bearing on the Court's decisions that Amgen's patents-in-suit are not invalid under the judicially-created obviousness-type double patenting doctrine. In Pfizer, a three-judge panel of the Federal Circuit invalidated one of Pfizer's patents as being invalid for obviousness-type double patenting. In that case, the Federal Circuit opined that the "safe harbor" for divisional applications of 35 U.S.C. § 121 (i.e., that divisional applications are not subject to obviousness-type double patenting rejections) did not extend to continuation-in-part applications. The CAFC based its decision in part on the plain language of the statute (which is limited to divisional applications), and on the grounds that, unlike a divisional application, a continuation-in-part application is not identical in disclosure to its parent. Thus, the Federal Circuit held that Congress did not evince an intention to permit an application having additional disclosure to benefit from the § 121 safe harbor.

Patent Docs also noted:

Interestingly, the lawyer representing Pfizer before the Federal Circuit, Leora Ben-Ami of Kaye Scholer LLP, is also the lead trial attorney representing Hoffman-LaRoche against Amgen.

IPBiz questions whether the Pfizer v. Teva did anything other than state what is in 35 USC 121.

The figure in Patent Docs for Amgen's cases lists the "children" cases (of the '298 app/'008 patent) as continuations, not as divisionals: ('178 app leading to the '933 patent; '179 app leading to '422 (5,955,422 ) and '349 patents).

Within the text of US 5,955,422:

This is a continuation of application Ser. No. 07/957,073, filed Oct. 6, 1992, abandoned, which is a continuation of application Ser. No. 07/609,741, filed Nov. 6, 1990, now abandoned, which is a continuation of application Ser. No. 07/113,179, filed Oct. 23, 1987, now U.S. Pat. No. 5,441,868, which is a continuation of application Ser. No. 06/675,298, filed Nov. 30, 1984, now U.S. Pat. No. 4,703,008, which is a continuation in part of application Ser. No. 06/655,841, filed Sep. 28, 1984, now abandoned, which is a continuation in part of application Ser. No. 06/582,185, filed Feb. 21, 1984, now abandoned, which is a continuation in part of application Ser. No. 06/561,024, filed Dec. 13, 1983, now abandoned.

Note Application No. 06/561,024, filed on December 13, 1983 seems to be the earliest "ancestor." The '008 patent in Patent Docs is a cip, of a cip of a cip of this earliest ancestor.

Within the text of US 5,547,933:

This is a continuation of application Ser. No. 08,202,874, filed Feb. 28, 1994, and now abandoned which was a continuation of U.S. application Ser. No. 07/113,178, filed Oct. 23, 1987, now abandoned, which was a continuation of U.S. application Ser. No. 06/675,298, filed Nov. 30, 1984, and issued Oct. 27, 1987 as U.S. Pat. No. 4,703,008 which was a continuation-in-part of U.S. Ser. No. 06/655,841, filed Sep. 28, 1984, and now abandoned, which was a continuation-in-part of U.S. application Ser. No. 06/582,185, filed Feb. 21, 1984, and now abandoned, which was a continuation-in-part of U.S. application Ser. No. 06/561,024, filed Dec. 13, 1983, and now abandoned.

Full post as published by IPBiz on April 01, 2008 (boomark / email).