Whether Obviousness Type Double Patenting Can Be Used To Invalidate Patents That Expire Later Because Of Patent Term Adjustment

• Published date: 11 August 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Katten Muchin Rosenman LLP
• Author: Mr Deepro Mukerjee, Brian Sodikoff and Lance Soderstrom

We write to advise you on an issue currently before the Federal Circuit in a case of first impression, namely whether a later-filed, earlier-expiring patent can be used as a reference for obvious-type double patenting (OTDP) to invalidate a patent that was filed earlier but expires later because of a patent-term adjustment (PTA). Mitsubishi Tanabe Pharma Corp. v. Sandoz Inc., Case No. 21-1876 (Fed. Cir. 2021). Below is a visual example of this situation:

Magna Elecs., Inc. v. TRW Auto. Holdings Corp., 2015 WL 11430786, at *2 (W.D. Mich. Dec. 10, 2015). The question is whether the '786 patent can serve as a reference to invalidate the PTA-adjusted '149 patent. While the Magna case involved car technology, the Sandoz action shows that the upcoming decision impacts the pharmaceutical sector (e.g., where an earlier-filed compound patent issues and expires after a later-filed polymorph patent because of PTO delays in prosecution of the compound patent).

Whether OTDP applies where a patent expires later because a PTA has not been considered by the Federal Circuit, but it has been considered by two district courts ' who have reached different conclusions. The first court to address this issue was the Western District of Michigan in Magna. There, the court conducted an extensive analysis into the history and purpose of the OTDP doctrine. OTDP applies where two patents claim the same invention but have different expiration dates, unless the two inventions are patentably distinct. Magna, 2015 WL 11430786, at *2 (citing AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1374 (Fed. Cir. 2014)). The doctrine is designed to prevent an inventor from securing a second, later-expiring patent for the same invention. Id; see also AbbVie, 764 F.3d at 1373. Thus, it prevents a patent owner from controlling the public's right to use the patented invention beyond the statutorily allowed patent term of that invention. Id.; see also Gilead Scis., Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1216-17 (Fed. Cir. 2014). ("Permitting any earlier expiring patent to serve as a double patenting reference for a patent subject to the URAA guarantees a stable benchmark that preserves the public's right to use the invention (and its obvious variants) that are claimed in a patent when that patent expires"). In Magna, the court focused on the expiry of the earlier reference (the '786 patent) and the public's right to practice that invention, finding that OTDP...