The court affirmed the holding that the reissue patent-at-issue was invalid for obviousness-type double patenting. The issue for the court to decide was whether the reissue patent was entitled to rely on the safe harbor provisions of Section 121 of the Patent Act, which permits that an application filed as a result of a restriction requirement shall not be used as a reference against a divisional application issued from the original patent application from which the restriction requirement was made. Here, the reissue patent had not issued from with the original application in which the restriction requirement was made or from a divisional of the original application. Instead, the reissue had issued from a continuation-in-part application that issued from a later PCT-based application. Although the reissue proceedings changed the status from a continuation-in-part application by removing the previously-added new matter, it could change the fact that, for a period of time, a patent had issued that included the new matter and that patent was able to prevent others from using the new matter for that time period.
G.D. Searle LLC. v. Lupin Pharmaceuticals, Inc., Case No. 2014-1476 (June 23, 2015); Opinion by: Bryson, joined by Prost and Hughes; Appealed From: District Court for the Eastern District of Virginia, Allen, J. Read the full opinion here.