Later-Issued patent that expires before earlier-issued patent can serve as a double patenting reference

Federal Circuit vacates judgment of infringement and remands for further proceedings. Gilead commonly owned two patents naming the same inventors where the earlier-expiring patent ('375 patent) issued after the later-expiring patent ('483 patent).

Gilead Sciences, Inc. v. Natco Pharma Limited, ___ F3d.___ (Fed. Cir. Apr. 22, 2014) (Rader (dissenting), Prost, CHEN) (D. N.J.: Wigenton) (2 of 5 stars)

Gilead sued Natco after it sought FDA approval to market a generic version of one of Gilead's drugs. Natco stipulated to infringement of the '483 patent, but argued that it was invalid for obviousness-type double patenting over the '375 patent. After reviewing cases on this doctrine, the Fed. Cir. discussed public policy rationales regarding free public use after an exclusivity period as to the invention and all obvious variants thereof, to support its holding that a patent that issues after but expires before another patent may qualify as a double patenting reference for that earlier-issued patent. The court also rejected the patentee’s focus on patent issuance dates because of the public policy shortcomings of this approach, and reasoned that it is “the comparison of [the patentee]’s patent expiration dates that should control, not merely the issuance dates.” Slip Op. at 13.

Dissent: Chief Judge Rader argued that expanding the obviousness-type double patenting doctrine was unnecessary where, as here, policy concerns about (1) the patent extension through ad infinitum filing of continuation patents pre-Uruguay Round Agreements Act and pre-General Agreement on Tariffs and Trade and (2) prevention of multiple suits by different assignees, were not at issue. He also cited the need for judicial restraint per concerns regarding potential unforeseen consequences of the majority's decision under the first-to-file framework of the America Invents Act.