Law360 Runs Akin Gump Article on ‘Obviousness’ Defense in Patent Litigation
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“Courts Are Unsettled On Obviousness-Type Double Patenting,” an article by Akin Gump intellectual property partner Rachel Elsby and associates Brooks Kenyon and Svetlana Pavlovic, has been published by Law360.
The article discusses what the authors call the “judicially created doctrine of obviousness-type double patenting, or ODP,” which they claim can be a “potent defense” in litigation. Under the ODP doctrine, they write, “patent claims that are not patentably distinct from those in a commonly owned, earlier-filed patent are subject to invalidation.”
The authors then discuss the origin and purpose of the ODP doctrine, as well as the challenges of its application; modifications to patent terms, specifically, patent term adjustment (PTA) and patent term extension (PTE); the impact of PTA and PTE on the ODP doctrine; how different district courts and the Patent Trial and Appeal Board (PTAB) have reached different conclusions on “how PTA impacts the ODP analysis”; ODP, PTA and PTE in 2021’s Amgen Inc. v. Sandoz Inc. and Magna Electronics Inc. v. TRW Automotive Holdings Corp.; and PTAB’s concurrence with Magna in Ex Parte Cellect LLC.
The authors conclude by noting, “Until further guidance is provided by the Federal Circuit, questions about the interaction between ODP and PTA will continue to appear. Patentees, especially those in pharmaceutical and biotechnology industries, should weigh the risk of ODP issues arising from a patent that is granted PTA with the need for filing a terminal disclaimer.”
They comment on patent examiners rejection of applications based on ODP, note that PTA grants are not uncommon, and point to a new bill, the Restoring the America Invents Act, that “seeks to expand the available inter partes review grounds to include ODP, where currently an IPR practitioner is limited to patentability grounds raised under Title of the 35 U.S. Code, Sections 102 and 103.”
They close by stating, “Given the frequency with which PTA is granted and the uncertainty in how it is viewed by the courts in the context of ODP, careful consideration should be given to filing and assertion strategies.”
To read the full article, click here.
