Selection Invention Found Unpatentable For Obviousness-Type Double Patenting

On August 21, 2014, the Federal Circuit issued a decision in AbbVie Inc. v. The Mathilda and Terence Kennedy Institute of Rheumatology Trust., holding that the claims to a selection invention were invalid based on obviousness-type double patenting over claims in an earlier-expiring patent that dominated the selection invention.

Patents at Issue -

The Mathilda and Terrance Kennedy Institute of Rheumatology Trust (“Kennedy”) is the assignee of U.S. Patent Nos. 7,846,442 (“the ‘442 patent”) and 6,270,766 (“the ‘766 patent”). The ‘766 patent expired on October 8, 2012, while the ‘442 patent expires August 21, 2018. The claims of the ‘766 patent require treating rheumatoid arthritis by co-administering methotrexate and an anti-TNFa antibody, whereas the claims of the ‘442 patent require treating an individual with rheumatoid arthritis whose active disease is incompletely controlled, despite already receiving methotrexate, comprising adjunctively administering methotrexate and an anti-human TNFa antibody. Kennedy conceded that the ‘766 patent encompasses the same inventive subject matter as the ‘442 patent. Kennedy argued that the ‘766 patent claims a broad genus, whereas the ‘442 patent claims a narrower species with unexpected results.

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