by Dennis crouch
Sandoz Inc. v. Immunex Corp. & Amgen (Supreme Court 2021)
This new petition asks the Supreme Court to chime-in on the judicially created doctrine of obviousness-type double-patenting. The basic rule is that it is improper for a patent owner to extend the term of a first patent by simply obtaining a second patent that is an obvious extension. You might ask – why do we need a separate double patenting doctrine here? Doesn’t Section 103 obviousness do the trick already?
Evergreening via continuation used to be much more of a potential problem in days of yore when the 17-year patent term only began running at the the patent issue date. This would allow a patentee to receive a first patent in a family, and then receive a second patent extending out the patent term. And, that result was seen as an abuse of the system. The obviousness doctrine did not work for this situation because the first patent filing was not prior art to the second filing. Rather, obviousness-type-double-patenting and resulting requirement of terminal disclaimers were the solution.
Although the change in patent term has reduced the potential dramatic impact of term extension via double patenting, the prior art exclusions under 102(b)(2) and generous patent term adjustments for PTO delays maintain a steady demand for the principle.
In Sandoz, the patentee (Immunex) is attempting to extend its patent term with an arguably obvious innovation, but in a bit of a different way. The second patent is not a continuation or even a creation of the patentee. In addition, the second patent was not even one purchased or owned by the patentee. Rather, Immunex exclusively licensed the second patent from Roche. In its decision, the Federal Circuit held that obviousness type double patenting did not apply against Immunex because the company did not own both patents and did not even hold all-substantial-rights since Roche retained a “secondary right to sue” infringers. To be clear on this, the license appears to have been specifically designed to thwart an obviousness-type-double-patenting challenge.
In the end, however, the Federal Circuit court found that all-substantial-rights had not been granted since Roche retained a “secondary right to sue” infringers “if Immunex fails to rectify any infringement within 180 days after written request by Roche.” The distinction here of course is not actually meaningful in any way with regard to Immunex’s attempt to extend its exclusive rights over its product. [My prior post]
Sandoz now asks the following question to the Supreme Court:
May the patent owner avoid the rule against double patenting by buying all of the substantial rights to a second, later-expiring patent for essentially the same invention, so long as the seller retains nominal ownership and a theoretical secondary right to sue for infringement?
The petition primarily cites old precedent:
- James v. Campbell, 104 U.S. 356 (1881) (it is “hardly necessary to remark that the patentee could not include in a subsequent patent any invention embraced or described in a prior one granted to himself.”).
- In re Mann, 47 F.2d 370 (C.C.P.A. 1931) (applying double patenting to applications of different inventors)
- McCreary v. Pa. Canal Co., 141 U.S. 459 (1891) (second patent barred even if claims are changed).
- Miller v. Eagle Manufacturing Co., 151 U.S. 186 (1894) (“no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ.”).
- Odiorne v. Amesbury Nail Factory, 18 F. Cas. 578 (C.C.D. Mass. 1819) (Story) (earlier patent creates “an estoppel to any future patent for the same invention”).
- Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169 (1896) (“It is self-evident that on the expiration of a patent the monopoly created by it ceases to exist, and the right to make the thing formerly covered by the patent becomes public property. It is upon this condition that the patent is granted.”).
- Suffolk Co. v. Hayden, 70 U.S. (3 Wall.) 315 (1866) (second patent to same inventor is void).