In Re Hubbell
709 F.3d 1140
| Fed. Cir. | 2013Background
- The '509 application (enzyme-mediated fibrin modification) is a CalTech-filed continuation of a prior CalTech patent family; Hubbell, Schense, Zisch, and Hall are co-inventors with CalTech ownership.
- The 685 patent (growth factor matrices) lists Hubbell, Schense, and Sakiyama-Elbert; ownership is ETHZ/Universität Zürich, not CalTech.
- The examiner rejected pending '509 claims for obviousness-type double patenting over the '422, '740, '609, and '685 patents; the Board affirmed as to the 685 patent.
- The '509 and the '685 claims share two common inventors but do not have common ownership; the '685 patent issued before the '509 application’s claims due to prosecution timing.
- Hubbell argued that common ownership or joint research agreements should be required and sought terminal disclaimer or two-way obviousness relief; the Board and court rejected these arguments.
- The Board concluded that double patenting is proper because a later claim is not patentably distinct from an earlier species, and Hubbell cannot obtain a terminal disclaimer or two-way analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether obviousness-type double patenting applies without common ownership | Hubbell argues no DTDP without common ownership or inventorship | Director argues DTDP applies with overlap in inventors, regardless of ownership | DTDP applies; overlap suffices despite no common ownership |
| Whether a terminal disclaimer is available given no common ownership | Hubbell seeks terminal disclaimer under CREATE Act | CREATE Act does not apply without common ownership or a joint research agreement | Terminal disclaimer not available; CREATE Act inapplicable |
| Whether a two-way obviousness analysis should apply | Hubbell urges two-way analysis due to delayed PTO timing | Delay not solely PTO-caused; two-way not warranted | Two-way analysis not applicable; one-way test governs |
Key Cases Cited
- In re Van Ornum, 686 F.2d 937 (CCPA 1982) (harassment rationale supports DTDP despite lack of ownership)
- In re Fallaux, 564 F.3d 1313 (Fed.Cir.2009) (harassment rationale particularly pertinent with common inventor overlaps)
- In re Berg, 140 F.3d 1428 (Fed.Cir.1998) (two-way test limited to unusual PTO delay scenarios)
- In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Fed.Cir.2008) (one-way vs two-way analysis; general standard of obviousness DTDP)
- In re Griswold, 365 F.2d 834 (CCPA 1966) (terminal disclaimer history and non-alienation concepts)