Federal Circuit IP

Allergan v. Sun

By Xiang Li Published September 18, 2024

Case No. 24-1061, Precedential, (Fed. Cir. Aug. 13, 2024)

Lourie, Dyk, Reyna

Facts/Background:

• Allergan sued Sun for patent infringement. District court decided that claim 40 of the ‘356 patent asserted against Sun is invalid under the doctrine of obviousness-type double patenting (ODP).  Federal Circuit reversed.
• Sun argued that claim 40 of the ‘356 patent is invalid for ODP over claims of the ‘011 and ‘079 patents, because these claims are not patentably distinct and the ‘356 patent expires after the ‘011 and ‘709 patents.

Issue:  Can a first-filed, first-issued, later-expiring claim be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date?

Holding:  It cannot.

Analysis: 

• “Here, we conclude that the ’011 and ’709 patents are not proper ODP references” for invalidating the ’356 patent. “That is the only conclusion consistent with the purpose of the ODP doctrine, which is to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a first patent to that subject matter.”  As the first-filed and first-issued patent in its family, the ‘356 patent sets the maximum period of exclusivity, which should not be shortened by a later-filed and later-issued patent.  Additionally, to hold otherwise would “effectively abrogate the benefit Congress intended to bestow on patentees when codifying PTA.”
• “Cellect is only controlling in this case to the extent that it requires us to consider . . . the ’356 patent’s June 24, 2026 expiration date….” “Cellect did not involve the situation presented here of ODP with respect to a first-filed, first-issued patent.”  “In any event, the patent owner in Cellect did not challenge whether the reference claims used to invalidate the asserted claims were proper ODP reference claims. Therefore, under the principle of party presentation, the court did not consider that issue.”

Takeaway: 

This case suggests that it is possible to create more carve-outs from Cellect based on the grounds of improper ODP references, which was not considered in Cellect.