Obviousness-Type Double Patenting Can Apply Without Common Ownership

Jeffrey Hubbell, Jason Schense, Andreas Zisch and Heike Hall were the named inventors on U.S. Patent Application No. 10/650,509 (“the '509 application”). The '509 application, titled “Enzyme-Mediated Modification of Fibrin for Tissue Engineering,” was filed on Aug. 27, 2003. The invention relates to tissue repair and regeneration using matrices containing bidomain peptides or proteins. Claim 18, which was representative of the pending claims, recited “[a] bidomain protein or peptide comprising a transglutaminase substrate domain and a polypeptide growth factor.”

The invention disclosed in the '509 application was based on research Jeffrey Hubbell and Jason Schense conducted while Hubbell was a Professor of Chemical Engineering at California Institute of Technology (“CalTech”) and Schense was a Ph.D. student there. Two other CalTech researchers ' Andreas Zich and Heike Hall ' also assisted Hubbell and were listed on the '509 application as coinventors. Because all of the named inventors were affiliated with CalTech, the '509 application was assigned to CalTech.

Hubbell left CalTech and joined the faculty at Eidgenossische Technische Hochschule Zurich (“ETHZ”) in 1998 ' roughly five years before the '509 application was filed. The application that issued as U.S. Patent No. 7,601,685 (“the '685 patent”) was filed on Dec. 17, 2002, and was based on research Hubbell and Schense conducted at ETHZ. The '685 patent, titled “Growth Factor Modified Protein Matrices for Tissue Engineering,” issued on Oct. 13, 2009, listed Jeffrey Hubbell, Jason Schense, and Shelly Sakiyama-Elbert as co-inventors, and was jointly assigned to ETHZ and Universitat Zurich.

It was undisputed that although the '509 application and the '685 patent had two inventors in common, Hubbell and Schense, they did not have identical inventive entities, common owners nor common assignees.

The '509 application was a continuation of Application No. 10/024,918 (“the '918 application”), which was filed on Dec. 18, 2001. The '918 application shared the same title and same inventors as the '509 application, and was also assigned to CalTech. During prosecution of the '918 application, the Examiner rejected all of the pending claims based on obviousness-type double patenting over U.S. Patent No. 6,331,422 (“the '422 patent”) and Application No. 09/695,466, which issued as U.S. Patent No. 6,607,740 (“the '740 patent”) on Aug. 19, 2003. Hubbell and Schense were the named inventors on the '422 and '740 patents, and both patents were assigned to CalTech.

In response, Hubbell filed two terminal disclaimers, amended certain claims, and added new claims. The Examiner indicated that claims 1-17 of the '918 application were allowable. Hubbell canceled the remaining claims, and a Notice of Allowance issued in June 2003. However, Hubbell failed to pay the issue fee on time, let the '918 application go abandoned, and instead filed the '509 application on Aug. 27, 2003.

In a final Office Action dated Oct. 5, 2007, the Examiner rejected certain claims of the '509 application for obviousness-type double patenting over the '422 and '740 patents, the application that issued as U.S. Patent No. 7,247,609 (“the '609 patent”) and the application that issued as the '685 patent. The Examiner found that the claims in the '685 patent were a species of the claims in the '509 application, and anticipated the claims. Hubbell appealed the rejections to the Board of Patent Appeals and Interferences (the “Board”).

The Appeal

On appeal, the Board reversed the Examiner's obviousness-type double patenting rejection over the '609 patent, but affirmed the rejections over the '422, '740 and '685 patents. Hubbell indicated that he would file terminal disclaimers with respect to the '422 and '740 patents, and the Board summarily affirmed those rejections.

The Board rejected Hubbell's argument that common ownership was a requirement for obviousness-type double patenting, and Hubbell appealed.

The Federal Circuit affirmed the obviousness-type double patenting rejection, noting:

Obviousness-type double patenting is a judicially created doctrine designed to prevent claims in separate applications or patents that do not recite the “same” invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection. ' It prohibits the issuance of claims in a second patent that are not patentably distinct from the claims of the first patent. ' A later patent claim is not patentably distinct from an earlier claim if the later claim is obvious over, or anticipated by, the earlier claim.

The Federal Circuit explained that there are two reasons for obviousness-type double patenting. The first reason is to prevent improper extension of the patent term, and the second reason is to prevent multiple infringement suits by different patent owners suing on essentially the same patented invention.

On appeal, Hubbell argued that obviousness-type double patenting should not apply where a patent application and a conflicting patent do not have identical inventive entities and were never commonly owned. However, the Federal Circuit disagreed, explaining that identity of inventorship and common ownership were not requirements for double patenting.

Hubbell also argued that if obviousness-type double patenting did not apply, he should be permitted to file a terminal disclaimer, which would avoid any concern regarding undue extension of the rights granted in the '685 patent. However, the Federal Circuit noted that as “a general rule, a terminal disclaimer filed to overcome an obviousness-type double patenting rejection is effective only where the application and conflicting patent are commonly owned.” Accordingly, the Federal Circuit held that because Hubbell did not qualify for a terminal disclaimer under the statute, he was not entitled to file a terminal disclaimer as an equitable measure.

Hubbell next argued that the rejected claims should be reconsidered under a two-way obviousness analysis. The Federal Circuit explained that as a general rule, a one-way test, which asks whether the patent application claims are obvious over the patented claims, applies to determine obviousness-type double patenting. In certain circumstances, a two-way test may apply, which asks whether the patented claims are obvious over the application claims. If not, the patent application claims later may be allowed.

However, the court indicated that the two-way test is a narrow exception to the general rule of the one-way test, which is available only when, through no fault of the applicant, the Patent Office decided the patent applications in the reverse order of filing, rejecting a basic application although it would have been allowed if the applications had been decided in the order of their filing. Thus, the Federal Circuit held that the two-way test is appropriate only in the unusual circumstance where the Patent Office is solely responsible for the delay in causing the second-filed application to issue prior to the first.

Hubbell also argued that he was entitled to a two-way obviousness analysis because the claims in the '509 application and the claims in the '685 patent could not have been filed together, and the Patent Office was partially responsible for the claims in the '685 patent issuing before the claims '509 application. The Patent Office responded that a two-way analysis was not applicable because Hubbell could not establish that the Patent Office was solely responsible for the '685 patent issuing before the '509 application.

The Federal Circuit agreed with the Patent Office because Hubbell conceded that he was partially responsible for the delay that caused the '685 patent to issue before the '509 application claims. According to the Federal Circuit:

These prosecution choices resulted in the foreseeable consequence that the '685 patent issued before the application claims on appeal. Given these circumstances, and because it is undisputed that the PTO was not solely responsible for the delay, Hubbell is not entitled to a two-way obviousness analysis.

Therefore, the Federal Circuit concluded that the Board properly affirmed the Examiner's decision rejecting the pending '509 patent application claims based on obviousness-type double patenting in view of the '685 patent.

The Dissent

In her dissent, Judge Pauline Newman argued that double patenting does not apply when the application and patent are of separate ownership and have separate inventive entities. She would have treated the applications as if they were completely separate, noting that “[i]n such situation the appropriate examination path is on the merits of the invention, or through the interference or derivation procedures, or other standard protocol as may apply in the particular situation.” Judge Newman further observed:

The court today not only finds “double patenting” when there is neither common inventorship nor common ownership, but having so found withholds the standard remedy of the terminal disclaimer, and simply denies the application. This novel ruling is contrary to statute and precedent, with no policy justification for changing the law. I respectfully dissent.

Conclusion

Accordingly, it is important to keep double patenting issues in mind when applications are owned by more than one entity. Different combinations of inventors may invent different subject matter, and under the Federal Circuit's In re Hubbell ruling, difficult double-patenting scenarios could arise if those inventions are not owned by the same entity.

'Irah H. Donner and Matthew Siegal are partners in the Intellectual Property Practice Group in the New York office of Stroock & Stroock & Lavan LLP. Siegal is a member of this newsletter's Board of Editors. The opinions expressed are their own and not necessarily those of the firm or any of its clients.

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In In re Hubbell, 2013 WL 828475 (Fed. Cir. 2013), the Federal Circuit held that obviousness-type double patenting applies when conflicting patent applications share common inventors, even if they lack common ownership. That is, complete identity of inventors or common ownership is not required for the Patent Office to impose an obviousness-type double patenting rejection. Moreover, the Federal Circuit denied Hubbell's request to file a terminal disclaimer, finding that a terminal disclaimer is only effective when the application and the conflicting patent are commonly owned.

In a dissent, Judge Pauline Newman argued that double patenting does not apply when the application and patent are of separate ownership and have separate inventive entities. Rather, the appropriate examination path is on the merits of the invention, i.e., whether the claims are non-obvious in view of the prior art or through the interference/derivation procedures.

The Facts

Jeffrey Hubbell, Jason Schense, Andreas Zisch and Heike Hall were the named inventors on U.S. Patent Application No. 10/650,509 (“the '509 application”). The '509 application, titled “Enzyme-Mediated Modification of Fibrin for Tissue Engineering,” was filed on Aug. 27, 2003. The invention relates to tissue repair and regeneration using matrices containing bidomain peptides or proteins. Claim 18, which was representative of the pending claims, recited “[a] bidomain protein or peptide comprising a transglutaminase substrate domain and a polypeptide growth factor.”

The invention disclosed in the '509 application was based on research Jeffrey Hubbell and Jason Schense conducted while Hubbell was a Professor of Chemical Engineering at California Institute of Technology (“CalTech”) and Schense was a Ph.D. student there. Two other CalTech researchers ' Andreas Zich and Heike Hall ' also assisted Hubbell and were listed on the '509 application as coinventors. Because all of the named inventors were affiliated with CalTech, the '509 application was assigned to CalTech.

Hubbell left CalTech and joined the faculty at Eidgenossische Technische Hochschule Zurich (“ETHZ”) in 1998 ' roughly five years before the '509 application was filed. The application that issued as U.S. Patent No. 7,601,685 (“the '685 patent”) was filed on Dec. 17, 2002, and was based on research Hubbell and Schense conducted at ETHZ. The '685 patent, titled “Growth Factor Modified Protein Matrices for Tissue Engineering,” issued on Oct. 13, 2009, listed Jeffrey Hubbell, Jason Schense, and Shelly Sakiyama-Elbert as co-inventors, and was jointly assigned to ETHZ and Universitat Zurich.

It was undisputed that although the '509 application and the '685 patent had two inventors in common, Hubbell and Schense, they did not have identical inventive entities, common owners nor common assignees.

The '509 application was a continuation of Application No. 10/024,918 (“the '918 application”), which was filed on Dec. 18, 2001. The '918 application shared the same title and same inventors as the '509 application, and was also assigned to CalTech. During prosecution of the '918 application, the Examiner rejected all of the pending claims based on obviousness-type double patenting over U.S. Patent No. 6,331,422 (“the '422 patent”) and Application No. 09/695,466, which issued as U.S. Patent No. 6,607,740 (“the '740 patent”) on Aug. 19, 2003. Hubbell and Schense were the named inventors on the '422 and '740 patents, and both patents were assigned to CalTech.

In response, Hubbell filed two terminal disclaimers, amended certain claims, and added new claims. The Examiner indicated that claims 1-17 of the '918 application were allowable. Hubbell canceled the remaining claims, and a Notice of Allowance issued in June 2003. However, Hubbell failed to pay the issue fee on time, let the '918 application go abandoned, and instead filed the '509 application on Aug. 27, 2003.

In a final Office Action dated Oct. 5, 2007, the Examiner rejected certain claims of the '509 application for obviousness-type double patenting over the '422 and '740 patents, the application that issued as U.S. Patent No. 7,247,609 (“the '609 patent”) and the application that issued as the '685 patent. The Examiner found that the claims in the '685 patent were a species of the claims in the '509 application, and anticipated the claims. Hubbell appealed the rejections to the Board of Patent Appeals and Interferences (the “Board”).

The Appeal

On appeal, the Board reversed the Examiner's obviousness-type double patenting rejection over the '609 patent, but affirmed the rejections over the '422, '740 and '685 patents. Hubbell indicated that he would file terminal disclaimers with respect to the '422 and '740 patents, and the Board summarily affirmed those rejections.

The Board rejected Hubbell's argument that common ownership was a requirement for obviousness-type double patenting, and Hubbell appealed.

The Federal Circuit affirmed the obviousness-type double patenting rejection, noting:

Obviousness-type double patenting is a judicially created doctrine designed to prevent claims in separate applications or patents that do not recite the “same” invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection. ' It prohibits the issuance of claims in a second patent that are not patentably distinct from the claims of the first patent. ' A later patent claim is not patentably distinct from an earlier claim if the later claim is obvious over, or anticipated by, the earlier claim.

The Federal Circuit explained that there are two reasons for obviousness-type double patenting. The first reason is to prevent improper extension of the patent term, and the second reason is to prevent multiple infringement suits by different patent owners suing on essentially the same patented invention.

On appeal, Hubbell argued that obviousness-type double patenting should not apply where a patent application and a conflicting patent do not have identical inventive entities and were never commonly owned. However, the Federal Circuit disagreed, explaining that identity of inventorship and common ownership were not requirements for double patenting.

Hubbell also argued that if obviousness-type double patenting did not apply, he should be permitted to file a terminal disclaimer, which would avoid any concern regarding undue extension of the rights granted in the '685 patent. However, the Federal Circuit noted that as “a general rule, a terminal disclaimer filed to overcome an obviousness-type double patenting rejection is effective only where the application and conflicting patent are commonly owned.” Accordingly, the Federal Circuit held that because Hubbell did not qualify for a terminal disclaimer under the statute, he was not entitled to file a terminal disclaimer as an equitable measure.

Hubbell next argued that the rejected claims should be reconsidered under a two-way obviousness analysis. The Federal Circuit explained that as a general rule, a one-way test, which asks whether the patent application claims are obvious over the patented claims, applies to determine obviousness-type double patenting. In certain circumstances, a two-way test may apply, which asks whether the patented claims are obvious over the application claims. If not, the patent application claims later may be allowed.

However, the court indicated that the two-way test is a narrow exception to the general rule of the one-way test, which is available only when, through no fault of the applicant, the Patent Office decided the patent applications in the reverse order of filing, rejecting a basic application although it would have been allowed if the applications had been decided in the order of their filing. Thus, the Federal Circuit held that the two-way test is appropriate only in the unusual circumstance where the Patent Office is solely responsible for the delay in causing the second-filed application to issue prior to the first.

Hubbell also argued that he was entitled to a two-way obviousness analysis because the claims in the '509 application and the claims in the '685 patent could not have been filed together, and the Patent Office was partially responsible for the claims in the '685 patent issuing before the claims '509 application. The Patent Office responded that a two-way analysis was not applicable because Hubbell could not establish that the Patent Office was solely responsible for the '685 patent issuing before the '509 application.

The Federal Circuit agreed with the Patent Office because Hubbell conceded that he was partially responsible for the delay that caused the '685 patent to issue before the '509 application claims. According to the Federal Circuit:

These prosecution choices resulted in the foreseeable consequence that the '685 patent issued before the application claims on appeal. Given these circumstances, and because it is undisputed that the PTO was not solely responsible for the delay, Hubbell is not entitled to a two-way obviousness analysis.

Therefore, the Federal Circuit concluded that the Board properly affirmed the Examiner's decision rejecting the pending '509 patent application claims based on obviousness-type double patenting in view of the '685 patent.

The Dissent

In her dissent, Judge Pauline Newman argued that double patenting does not apply when the application and patent are of separate ownership and have separate inventive entities. She would have treated the applications as if they were completely separate, noting that “[i]n such situation the appropriate examination path is on the merits of the invention, or through the interference or derivation procedures, or other standard protocol as may apply in the particular situation.” Judge Newman further observed:

The court today not only finds “double patenting” when there is neither common inventorship nor common ownership, but having so found withholds the standard remedy of the terminal disclaimer, and simply denies the application. This novel ruling is contrary to statute and precedent, with no policy justification for changing the law. I respectfully dissent.

Conclusion

Accordingly, it is important to keep double patenting issues in mind when applications are owned by more than one entity. Different combinations of inventors may invent different subject matter, and under the Federal Circuit's In re Hubbell ruling, difficult double-patenting scenarios could arise if those inventions are not owned by the same entity.

'Irah H. Donner and Matthew Siegal are partners in the Intellectual Property Practice Group in the New York office of Stroock & Stroock & Lavan LLP. Siegal is a member of this newsletter's Board of Editors. The opinions expressed are their own and not necessarily those of the firm or any of its clients.

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