Federal Circuit Reverses and Remands District Court Ruling in Obviousness-type Double Patenting Case
By Kassity Liu – Edited by Joey Seiler
Boehringer Ingelheim Int’l. v. Barr Laboratories, Inc., No. 2009-1032 (Fed. Cir. 2010).
The Federal Circuit reversed and remanded the District Court for the District of Delaware, which had ruled that U.S. Patent No. 4,866,812, owned by the appellant Boehringer, was invalid because Boehringer’s terminal disclaimer did not overcome obviousness-type double patenting with respect to an earlier expired patent, and because the safe harbor provision of § 121 of the Patent Act does not protect the current patent.
The District Court had ruled that the terminal disclaimer filed by Boehringer on the last day of the trial was inoperative because it was filed after the original patent, U.S. Patent No. 4,843,086, had expired. The court also concluded that the safe harbor provision of § 121 did not apply to the ‘812 patent because it was not filed as a result of any restrictions in the ‘086 patent but rather due to a restriction in another patent, U.S. Patent No. 4,731,374. On appeal, the Federal Circuit agreed with the District Court on the issue of the terminal disclaimer, but found that the safe harbor provision did apply.
271 Patent Blog and Patently-O Blog provide brief overviews of the case. Patent Docs gives a more detailed analysis of the case as well as a short summary of the dissenting opinion. IPWatchdog talks about the practical nature of the decision and criticizes the dissent’s narrow interpretation of the safe harbor provision. (more…)