News & Analysis as of

Patents Obviousness-Type Double Patenting (ODP) Obviousness

Polsinelli

Federal Circuit Affirms District Court’s Obviousness Judgment on ImmunoGen Patent Application

Polsinelli on

1. Background: ImmunoGen’s Patent Application & Dispute - In 2014, ImmunoGen, Inc. (Immunogen) filed U.S. Patent Application No. 14/509,809 (the ’809 application)....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc.

Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc., Appeal Nos. 2024-1965, -1966, -2082, -2083 (Fed. Cir. Jan. 29, 2025) Our Case of the Week is a 31-page decision that touches on a variety of issues, including...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Emphasizes Role of Filing Dates, Reversing Obviousness-Type Double Patenting Invalidation

In Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. August 13, 2024), the Federal Circuit reversed the District Court of Delaware’s invalidity determination of certain claims of U.S. Patent No....more

Mintz - Intellectual Property Viewpoints

The New Rubric for Obviousness-Type Double Patenting

The basis for obviousness-type double patenting (ODP) is found in 35 U.S.C. § 101, establishing an applicant is entitled to a single patent, “a patent” or the “first” patent, for an invention....more

DLA Piper

Effect of Patent Term Extensions on Obviousness-type Double Patenting

DLA Piper on

The US Court of Appeals for the Federal Circuit issued its opinion in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024), holding that “a first-filed, first-issued, later-expiring claim cannot...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Allergan Limits Cellect, But Leaves Ambiguity in ODP Analysis

On August 13, the Federal Circuit, in Allergan USA, Inc. v. MSN Laboratories Private Ltd., held that a “first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring...more

Jones Day

Supreme Court Denies Cellect Petition on Interplay Between PTA and ODP

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The Supreme Court denies Cellect LLC's petition for certiorari to consider whether patent term adjustment ("PTA") should be included in patent term for obviousness-type double patenting ("ODP") purposes....more

A&O Shearman

Federal Circuit Provides Clarity On Proper Obviousness-Type Double Patenting References

A&O Shearman on

In Allergan USA, Inc. et al., v. MSN Laboratories Private Ltd., et al., the United States Court of Appeals for the Federal Circuit issued a precedential decision relating to obviousness-type double patenting (“ODP”) and...more

McDermott Will & Emery

Later-Filed, Earlier-Expiring Patent Not an ODP Reference

McDermott Will & Emery on

Addressing invalidity due to obvious-type double patenting (ODP) based on later-filed-related patents, the US Court of Appeals for the Federal Circuit reversed a district court’s application of In re Cellect (Fed. Cir. 2023)...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Selective Readings of Cellect: Federal Circuit Carves out First Exception to Burgeoning Double Patenting Challenges

Last year, the Federal Circuit surprised many observers of patent law in In re Cellect LLC, 81 F.4th 1216, 1228–29 (Fed. Cir. 2023) when—for the first time—it affirmed a U.S. Patent & Trademark Office decision cancelling an...more

BakerHostetler

The Obviousness-Type Double Patenting Saga Continues!

BakerHostetler on

A later-filed, later-issued, earlier-expiring child patent cannot be used as an obviousness-type double patenting (ODP) reference against its first-filed, first-issued, later-expiring parent patent having a common priority...more

Mintz - Intellectual Property Viewpoints

A Typo to Remember: Erroneous Patent Number in Terminal Disclaimer Destroys Exclusive Rights

Co-authored by Sam Cohen, Summer Associate 2024. On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because...more

Ballard Spahr LLP

In re Cellect Poses an Obvious Dilemma

Ballard Spahr LLP on

In August 2023, the Federal Circuit in In re Cellect held that in evaluating unpatentability for obviousness-type double patenting (ODP) of a patent that has received patent term adjustment (PTA), the relevant date is the...more

Mintz - Intellectual Property Viewpoints

A Continuation Application is an Implicit Admission of Obviousness-Type Double Patenting When Filed from a Parent Patent

Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent. A Terminal Disclaimer in the continuation patent over...more

Womble Bond Dickinson

Navigating the Implications of In re Cellect: What You Need to Know About Patent Term Adjustment & Obviousness-Type Double...

Womble Bond Dickinson on

On January 19, 2024, the Court of Appeals for the Federal Circuit issued an order denying the Petition for Rehearing En Banc in the much awaited In re Cellect matter. The mandate of the court issued today....more

Jones Day

Federal Circuit Denies Petition for Rehearing En Banc Filed By Cellect, LLC

Jones Day on

The Federal Circuit denied Cellect, LLC's petition for rehearing en banc of the In re Cellect case, which held that the expiration of a patent for obviousness-type double patenting ("ODP") purposes is the expiration date...more

Venable LLP

USPTO Rejects "Contingent" Terminal Disclaimer

Venable LLP on

On January 18, 2024, the USPTO rejected a "contingent" terminal disclaimer filed by Acadia Pharmaceuticals Inc. (Acadia) for a patent it owns that is being challenged in a pending litigation as invalid for obviousness-type...more

Womble Bond Dickinson

Industry Reactions to In re Cellect Decision

Womble Bond Dickinson on

An August 2023 decision from the Federal Circuit Court of Appeals highlighted potential new fragilities in the patent portfolios of many industry giants, especially those in the pharmaceutical industry....more

McDermott Will & Emery

Same Applicant, Similar Claims Support Obviousness-Type Double Patenting Rejection

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness-type double patenting rejection, finding that an unexpected mechanism of action does not render the known use of a known...more

Akin Gump Strauss Hauer & Feld LLP

In Wake of In re Cellect, District Court Interprets Safe Harbor Statute and Finds Patent Not Invalid for Obviousness-Type Double...

The District Court for the District of Delaware recently held on summary judgment that a patent with 2,295 days of combined patent term adjustment (PTA) and patent term extension (PTE) was not invalid for obviousness-type...more

Fish & Richardson

District of Delaware Finds Allergan Patents Invalid for Lack of Written Description and Obviousness-Type Double Patenting in...

Fish & Richardson on

On September 27, 2023, Judge Richard Andrews, following a three-day bench trial, determined that several patents asserted by Allergan against Sun Pharmaceuticals and MSN Laboratories were invalid for lack of written...more

MoFo Life Sciences

Patent Term Adjustment Takes A Hit In Cellect Decision

MoFo Life Sciences on

Recently, the Federal Circuit addressed a significant issue of first impression with respect to obviousness-type double patenting (ODP), holding that ODP applies to patent claims that claim priority to the same application...more

WilmerHale

Federal Circuit Patent Watch: Patent owner’s rights and arguments, like wakesurfing, must be fair and balanced

WilmerHale on

Precedential and Key Federal Circuit Opinions - VOLVO PENTA v. BRUNSWICK CORP. [OPINION] (2022-1765, 8/24/2023) (Moore, Lourie, and Cunningham) - Moore, Chief J. The Court vacated and remanded the Patent Trial and...more

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