Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical (No. 2017-2173, -2175, -2176, -2178, -2179, -2180, -2182, -2183, -2184, 12/7/18) (Prost, Wallach, Chen)
Chen, J. Reversing decision on obviousness-type double patenting. Of the two patents at issue, one was filed prior to the URAA and entitiled to a term of 17 years from issue, and the other was filed after the URAA and entitled to a term of 20 years from the filing date. Due to the difference in terms, the latter of the two patents to issue was the first to expire. “The legal question we confront in this appeal is whether the law of obviousness-type double patenting requires a patent owner to cut down the earlier-filed, but later expiring, patent’s statutorily-granted 17-year term so that it expires at the same time as the later-filed, but earlier expiring patent, whose patent term is governed under an intervening statutory scheme of 20 years from that patent’s earliest effective filing date.” Distinguishing Gilead, in which both patents had been filed after the URAA, the Court found that obviousness-type double patenting did not apply.
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