Federal Circuit Finds Obviousness-Type Double Patenting Without Common Ownership

Obviousness-type double patenting usually arises between commonly-owned patents or patent applications. While the USPTO has interpreted the judicially-created doctrine as pertaining when there is common or overlapping inventorship, without regard to common ownership, the Federal Circuit had not upheld that interpretation of the doctrine until last week, in In re Hubbell.

The Patent and Application at Issue

The obviousness-type double patenting rejection at issue was raised in U.S. Patent Application No. 10/650,509, which names Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as inventors, and which was assigned to California Institute of Technology ("Cal Tech").

The '509 application was filed August 27, 2003, as a continuation of U.S. Patent Application No. 10/024,918, filed December, 18, 2001, which was a continuation-in-part of U.S. Patent Application No. 09/057,052, filed April 8, 1998, which was a continuation of PCT Application PCT/US98/06617, filed April 2, 1998, which claims priority to U.S. Provisional Application No. 60/042,143, filed April 3, 1997.

The '509 application is directed to "Enzyme-Mediated Modification of Fibrin for Tissue Engineering." Representative claim 18 recites:

A bidomain protein or peptide comprising a transglutaminase substrate domain and a polypeptide growth factor.

In 1998, Hubbell left Cal Tech and went to work at Eidgenossische Technische Hochschule Zurich ("ETHZ"). The cited patent, U.S. Patent 7,601,685, is related to work done by Hubbell and Schense at ETHZ.

The '685 patent names Jeffrey Hubbell, Jason Schense, and Shelly Sakiyama-Elbert as inventors, and was assigned to Eidgenossische Technische Hochschule Zurich ("ETHZ") and Universitat Zurich.

The '685 patent is based on an application that was filed December 17, 2002, and was granted on October 13, 2009. The patent is directed to "Growth Factor Modified Protein Matrices for Tissue Engineering." Representative claim 1 recites:

A fusion protein, comprising: (i) a first protein domain; (ii) a second protein domain; and (iii) an enzymatic or hydrolytic cleavage site between the first and second domains; wherein the first domain is a growth factor selected from the group consisting of the platelet derived growth factor superfamily and the transforming growth factor beta (TGFβ) superfamily; wherein the second domain is a crosslinking Factor XIIIa substrate domain; wherein the enzymatic cleavage site is selected from the group consisting of...