BOEHRINGER INGELHEIM INTERNATIONAL GMBH and Boehringer Ingelheim Pharmaceuticals, Inc., Plaintiffs-Appellants, v. BARR LABORATORIES, INC. and Barr Pharmaceuticals, Inc., Defendants, and Mylan Pharmaceuticals, Inc., Defendant-Appellee.
No. 2009-1032.
United States Court of Appeals, Federal Circuit.
Jan. 25, 2010.
592 F.3d 1340
This seriously improper result requires judicial attention, for by refusing to credit any of its own official records made before July 1, 1990, the government retains for itself the entirety of the tax that was improperly collected from Chrysler. From my colleagues’ contrary ruling, I respectfully dissent.
Bruce M. Wexler, Paul, Hastings, Janofsky & Walker LLP, of New York, NY, argued for plaintiffs-appellants. With him on the brief were Joseph M. O‘Malley, Jr., Eric W. Dittmann and Angela C. Ni; and Stephen B. Kinnaird, of Washington, DC.
Shannon M. Bloodworth, Perkins Coie LLP, of Washington, DC, argued for defendant-appellee. With her on the brief was David J. Harth, of Madison, WI. Of counsel was Sarah C. Walkenhorst, Perkins Coie LLP, of Madison, WI.
Before LINN, DYK, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN. Opinion dissenting-in-part filed by Circuit Judge DYK.
LINN, Circuit Judge.
Boehringer is the record owner of the ‘812 patent, which claims certain tetrahydrobenzthiazole compounds. Boehringer, 562 F.Supp.2d at 623; ‘812 patent [57], col.23 l.67-col.26 l.22. One of the claimed tetrahydrobenzthiazole compounds is 2-Amino-6-dimethylamino-4,5,6,7-tetrahydrobenzthiazole, known more commonly as pramipexole. Boehringer, 562 F.Supp.2d at 623; ‘812 patent col.25 ll.19-21 (claim 7). Boehringer manufactures, markets, and sells pharmaceutical tablets containing pramipexole under the brand name Mirapex. Boehringer, 562 F.Supp.2d at 624. On July 1, 1997, the United States Food and Drug Administration (“FDA“) approved Boehringer‘s New Drug Application (“NDA“) for Mirapex, for the treatment of “signs and symptoms of idiopathic Parkinson‘s disease.” Id.; J.A. 947, 1017-18.
The ‘812 patent is the third in a chain of related patents, all of which share a common specification. The first application in the chain is U.S. Patent Application No. 06/810,947 (the “‘947 application“), filed December 19, 1985. ‘812 patent [62]; Boehringer, 562 F.Supp.2d at 625. The ‘947 application originally contained fifteen claims. Boehringer, 562 F.Supp.2d at 625. During prosecution of the ‘947 application, the examiner issued a restriction requirement listing ten groups of claims related to what the examiner considered to be independent and distinct inventions:
- Claims 1-8 (at least part of each), drawn to benzothiazole compounds and a pharmaceutical composition, classified in Class 548, subclasses 161, 163 and 164.
- Claims 1-5 and 8-10 (at least part of each), drawn to pyrrolidinyl-substituted benzothiazole compounds and a pharmaceutical composition, classified in Class 514, subclass 367.
- Claims 1-4 and 8 (at least part of each), drawn to piperidinyl-substituted benzothiazole compounds and a pharmaceutical composition, classified in Class 546, subclass 192.
- Claims 1-4 and 8 (at least part of each), drawn to hexamethylimino substituted benzothiazole compounds and a pharmaceutical composition, classified in Class 540, subclass 603.
- Claims 1-4 and 8, drawn (at least part of each) [to] morpholinyl-substituted benzothiazole compounds and a pharmaceutical composition, classified in Class 544, subclass 135.
- Claim 14, drawn to a method of preparing benzothiazole compounds using a thiourea reactant.
- Claim 15, drawn to a method of preparing benzothiazole compounds using a disulfide reactant classified based on type of compound formed.
- Claims 9 and 10, drawn to a method of lowering blood pressure or heart rate classified based on type of compound used.
- Claims 11 and 12, drawn to a method for treating Parkinsonism, classified based on type of compound used.
- Claim 13, drawn to a method for treating schizophrenia, classified based on type of compound used.
U.S. Patent Appl. Serial No. 06/810,947, Office Action, at 2-3 (Sept. 4, 1986) (“Office Action“). Although the restriction requirement stated that each of the ten groups was a distinct invention, the examiner allowed the applicant to elect “either (A)
In response to the restriction requirement, the applicants elected to prosecute claims directed to the invention of Group II (pyrrolidinyl-substituted benzothiazole compounds) and to the invention of Group IX (a method for treating Parkinsonism using those compounds). Boehringer, 562 F.Supp.2d at 625. The applicants amended the claims of the ‘947 application accordingly, and U.S. Patent No. 4,731,374 (the “‘374 patent“) issued from the application on March 15, 1988. Id.
While the ‘947 application was pending, the applicants filed U.S. Patent Application No. 07/124,197 (the “‘197 application“) as a divisional of the ‘947 application. Id. A different examiner was assigned to the ‘197 application. Id. at 625 n. 2. The ‘197 application originally contained all of the claims of the original ‘947 application, but, following a rejection, the applicants amended the ‘197 application so that it claimed various methods of using tetrahydrobenzthiazole compounds to treat certain medical conditions. Id. at 625. The method-of-use claims of the ‘197 application encompassed the examiner‘s demarcated inventions of Groups VIII and X of the restriction requirement, as well as that of Group IX directed to the use of compounds other than the compound of Group II elected in the ‘947 parent. Id.; see also Br. for Plaintiffs-Appellants 12, 14-17 (noting that “new claims 16 through 55 [of the ‘197 application] claimed the methods of use set forth in Groups VIII-X“). Thus, none of the claims of the ‘197 application covered subject matter elected in the ‘947 parent. The respective claims of the ‘197 and ‘947 applications were therefore divided as between applications along the lines of demarcation drawn by the examiner in the restriction requirement. These new claims were ultimately allowed, and U.S. Patent No. 4,843,086 (the “‘086 patent“) issued from the application on June 27, 1989. Boehringer, 562 F.Supp.2d at 626. The ‘086 patent expired on June 27, 2006.
On October 12, 1988, during the pendency of the ‘197 application, the applicants filed U.S. Patent Application No. 07/256,671 (the “‘671 application“), which was the application from which the ‘812 patent issued. Id. The ‘671 application was filed as a division of the second application in the chain—the ‘197 application. It was not filed as a division of the first application—the ‘947 application. In fact, at the time that the ‘671 application was filed, the ‘374 patent had already issued from the ‘947 application, so no further divisionals from the ‘947 application were permitted. See ‘374 patent [45];
After the issuance of the ‘812 patent and after the FDA approved Boehringer‘s NDA for Mirapex, Boehringer applied for a patent term extension for the ‘812 patent
On October 26, 2005, Mylan Pharmaceuticals, Inc. (“Mylan“) notified Boehringer that it had submitted an Abbreviated New Drug Application (“ANDA“) for generic pramipexole. Boehringer, 562 F.Supp.2d at 624. In response, Boehringer brought a patent infringement action against Mylan, and the action was consolidated with Boehringer‘s previously filed patent infringement action against an earlier ANDA filer, Barr Laboratories, Inc. (“Barr“).1 Id. Specifically, Boehringer alleged that, by filing an ANDA, Mylan infringed claims 5, 7, 9, and 10 of the ‘812 patent. Id. at 623. As a defense, Mylan argued that the asserted claims of the ‘812 patent were invalid for obviousness-type double patenting in view of the ‘086 patent. Id. Mylan also counterclaimed seeking a declaration that claims 3, 4, 5, 7, 9, and 10 of the ‘812 patent are invalid for obviousness-type double patenting. Id.
The district court conducted a bench trial in March 2008. On the last day of trial, Boehringer sought to overcome the obviousness-type double patenting defense based on the then-expired ‘086 patent by filing a terminal disclaimer of the ‘812 patent with the Patent Office. Boehringer‘s terminal disclaimer purported to disclaim “only the terminal part of the statutory term of the ‘812 patent which would extend beyond 1,564 days after the full statutory term of the ‘086 patent as that term is defined in
The district court concluded that Boehringer‘s terminal disclaimer was ineffective to overcome the obviousness-type double patenting rejection, because the disclaimer was filed after the ‘086 patent had expired. Boehringer, 562 F.Supp.2d at 631. The district court also rejected Boehringer‘s argument that the safe-harbor provision of
The district court entered final judgment in favor of Mylan, and Boehringer timely appealed. We have jurisdiction pursuant to
II. DISCUSSION
Boehringer raises two issues on appeal: (1) whether its retroactive terminal disclaimer was effective to overcome invalidity based on obviousness-type double patenting; and (2) whether the safe-harbor provision of
A. Retroactive Terminal Disclaimer
Because
The purpose for the doctrine of obviousness-type double patenting is well established: The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise extension of patent [rights] for the same invention or an obvious modification thereof. Lonardo, 119 F.3d at 965; see also Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed.Cir.2001) (“The judicially-created doctrine of obviousness-type double patenting cements [the] legislative limitation [of
The doctrine of obviousness-type double patenting is an important check on improper extension of patent rights through the use of divisional and continuation applications, at least for patents issued from applications filed prior to the amendment of
“For obviousness-type double patenting, [the improper extension of the statutory term] can sometimes be avoided for co-owned patents or applications through the use of a terminal disclaimer.” Id. Terminal disclaimers are expressly permitted under
A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent....
In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
“[A] terminal disclaimer may restrict the slight variation to the term of the original patent and cure the double patenting rejection.” Geneva Pharms., Inc. v. GlaxoS-mithKline PLC, 349 F.3d 1373, 1378 (Fed.Cir.2003).
In this case, in response to Mylan‘s assertion that the ‘812 patent was invalid for obviousness-type double patenting over its parent, the ‘086 patent, Boehringer attempted to disclaim the terminal portion of the original term of the ‘812 patent, so that its original term would end on the date of the expiration of the ‘086 patent. See J.A. 4199; see also Br. for Plaintiffs-Appellants 22 (showing that, after Boehringer‘s terminal disclaimer, the expiration date of the original term of the ‘812 patent was the same as the expiration date of the ‘086 patent). Because the terminal disclaimer was filed on March 13, 2008—long after the expiration of the ‘086 patent on June 27, 2006—the district court held that the terminal disclaimer was ineffective and did not preclude the ‘812 patent from being held invalid on the basis of obviousness-type double patenting. Boehringer, 562 F.Supp.2d at 631. Boehringer appeals the district court‘s holding. Our review is de novo. See, e.д., NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1314 (Fed.Cir.2005) (“This court reviews the statutory construction of a district court de novo.“); Lonardo, 119 F.3d at 965 (“Double patenting is a question of law that we review de novo.“).
Preliminarily, we reject Boehringer‘s argument that the district court, in expressing concerns about “gamesmanship” in filing terminal disclaimers during litigation, somehow improperly imported a bar of disclaimers during litigation into the statute authorizing terminal disclaimers,
We agree with Boehringer—and Mylan does not dispute—that a patentee may file a disclaimer after issuance of the challenged patent or during litigation, even after a finding that the challenged patent is invalid for obviousness-type double patenting. See, e.g., Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed.Cir.2005) (noting that there is no “prohibition on post-issuance terminal disclaimers” and that “[a] terminal disclaimer can indeed supplant a finding of invalidity for double patenting“). The question here is whether a retroactive terminal disclaimer—i.e., a terminal disclaimer that is filed after the expiration date of an earlier commonly owned patent—is effective to overcome obviousness-type double patenting.
“The fundamental reason for the rule [of obviousness-type double patenting] is to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about.” In re Van Ornum, 686 F.2d 937, 943-44 (CCPA 1982) (quoting In re Schneller, 55 C.C.P.A. 1375, 397 F.2d 350, 354 (1968)); see also Lonardo, 119 F.3d at 965 (emphasizing purpose of doctrine of double patenting of precluding “patentee from obtaining a time-wise extension of patent [rights] for the same invention or an obvious modification thereof“). When the claims of a patent are obvious in light of the claims of an earlier commonly owned patent, the patentee can have no right to exclude others from practicing the invention encompassed by the later patent after the date of the expiration of the earlier patent. But when a patentee does not terminally disclaim the later patent before the expiration of the earlier related
By failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage—a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with “[t]he fundamental reason” for obviousness-type double patenting, namely, “to prevent unjustified timewise extension of the right to exclude.” Van Ornum, 686 F.2d at 943-44 (emphasis removed). We therefore hold that a terminal disclaimer filed after the expiration of the earlier patent over which claims have been found obvious cannot cure obviousness-type double patenting.
We note that this holding is consistent with our treatment of this issue in Lonardo:
With obviousness-type double patenting, ... a terminal disclaimer may overcome that basis for unpatentability, assuming that the first patent has not expired. In this case, the [patent] over which the claims have been rejected ... has expired, so a terminal disclaimer cannot cure these rejections.
Lonardo, 119 F.3d at 965 (emphasis added). Boehringer argues that this language in Lonardo is dicta, and that it “merely observed that there would be no reason to issue a patent application terminally disclaimed to an expired patent since that application would theoretically issue without any term.” Br. for Plaintiffs-Appellants 42. Boehringer is correct that the applicant in Lonardo did not actually file a terminal disclaimer or rely on a terminal disclaimer to cure obviousness-type double patenting. Even though we may not technically be bound by this language in Lonardo, it is instructive and our holding is consistent with it.
In this case, assuming that the claims of the ‘812 patent are obvious in light of the claims of the ‘086 patent, Boehringer would have had no right to exclude others from practicing the subject matter encompassed by the ‘812 patent after the expiration date of the ‘086 patent. However, because the ‘812 patent purported to remain in force after June 27, 2006, and because Boehringer did not disclaim it before then, Boehringer enjoyed an unjustified advantage—a purported time extension of the right to exclude from June 27, 2006 forward. There is nothing that Boehringer can do now to “unexercise” the right that it has already improperly enjoyed. Boehringer‘s terminal disclaimer therefore cannot cure a finding of invalidi-
Boehringer argues that it did not enjoy any unjustified advantage because it had properly obtained a term extension under
The rights derived from any patent the term of which is extended under this paragraph shall, during the period of interim extension—
(i) in the case of a patent which claims a product, be limited to any use then under regulatory review;
(ii) in the case of a patent which claims a method of using a product, be limited to any use claimed by the patent then under regulatory review; and
(iii) in the case of a patent which claims a method of manufacturing a product, be limited to the method of manufacturing as used to make the product then under regulatory review.
We also reject Boehringer‘s argument that the outcome in this case is dictated by our decision in Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 (Fed.Cir.2007). In Merck, the court held simply that “a patent term extension under
We conclude that Boehringer‘s terminal disclaimer cannot overcome obviousness-type double patenting based on the ‘086 patent because the terminal disclaimer was filed after the expiration of the ‘086 patent.
B. Safe-Harbor Provision of 35 U.S.C. § 121
Boehringer argues in the alternative that the safe-harbor provision of
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application....
The emphasized third sentence of
The safe harbor is provided to protect an applicant from losing rights when an application is divided. The safe harbor of
The district court held that
Thus, on appeal, the parties present us with two issues related to
1. Applicability of § 121 to a Divisional of a Divisional
Section 121 refers to restriction among “two or more independent and distinct inventions” and provides that a patent issuing on either the original application subject to a restriction requirement (“an application with respect to which a requirement for restriction under this section has been made“) or a divisional application (“an application filed as a result of such a requirement“) cannot be used as a reference against either “the original application” or “a divisional application.”
We therefore reject Mylan‘s argument that
2. The “as a result of” Requirement
The district court held that the “as a result of” requirement of
Boehringer first argues that while the district court was correct as to the ‘086 patent, it erred by requiring the “as a result of” requirement to “carry over” to the next patent in the chain. According to Boehringer, the “as a result of” requirement of
We agree with the district court that the “as a result of” requirement must be satisfied by both the ‘086 reference patent and the ‘812 challenged patent. We have repeatedly held that the “as a result of” requirement applies to the challenged patent as well as the reference patent. See, e.g., Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 1360 (Fed.Cir.2008) (“[T]he third sentence of [
Boehringer next contends that the application that matured into the ‘812 patent does meet the “as a result of” requirement. Boehringer argues that the ‘812 patent traces its lineage to the ‘374 patent and claims a subset of the non-elected subject matter from the ‘947 application. Moreover, it asserts that but for the restriction requirement, it could have pursued all the claims of the ‘812 patent in the ‘947 application and that any motivation with regard to the Eli Lilly patent is irrelevant. Boehringer finally argues that when an examiner issues a restriction requirement identifying more than two independent and distinct inventions, the choice of how to prosecute non-elected inventions is up to the applicant and is constrained neither by the terms of an examiner‘s restriction requirement nor by the language of
We agree with Boehringer. The restriction requirement entered in the ‘947 application required only an election in that application of a subset of the ten identified inventions. It also had the effect of obligating Boehringer to file one or more divisional applications if it wanted patent protection for the non-elected subject matter. Boehringer did so not by filing separate divisional applications on each of the inventions grouped by the examiner in the restriction requirement, but instead, by filing two successive divisionals to different combinations of the inventions identified in the restriction requirement. In doing so, Boehringer neither violated the examiner‘s restriction requirement nor risked loss of the safe harbor of
As noted, supra, the safe harbor is provided to protect an applicant from being penalized for dividing an application. Section 121 is not concerned with any overlap in non-elected inventions prosecuted within any particular divisional application or in how any such applications are filed. To prevent loss of the safe harbor in dividing out claims to non-elected inventions, what
According to Mylan, this means that an applicant must strictly follow an examiner‘s election procedure and not overlap claims to independent and distinct inventions in any single divisional application. We disagree. An overlap of claims to independent and distinct inventions within a given divisional application is neither contrary to the restriction requirement nor relevant to the requirements of the third sentence of
Plain common sense dictates that a divisional application filed as a result of a restriction requirement may not contain claims drawn to the invention set forth in the claims elected and prosecuted to patent in the parent application. The divisional application must have claims drawn only to the “other invention.”
Id. at 687. We later reiterated that “[t]o gain the benefits of Section 121 ... Gerber must have brought its case within the purview of the statute, i.e., it must have limited the claims in its divisional application to the non-elected invention or inventions.” Id. at 688 (emphases added). The divisions need not be limited to a single one of the examiner‘s demarcated inventions to preserve the right to rely on the safe harbor of
Here, as noted earlier, the restriction requirement imposed during prosecution of the ‘947 application divided the claims into groups, each covering what the examiner demarcated as an invention “independent and distinct, each from the other.” Office Action at 3. None of the inventions claimed as between the ‘374 original patent, the ‘086 division, and the ‘812 division of the division, crosses the examiner‘s lines of demarcation of inventions identified in the restriction requirement. Thus, consonance is met and the ‘086 patent cannot be used as a reference against the ‘812 patent any more than if both patents had issued from direct divisions from the application in which the restriction requirement was made.4
III. CONCLUSION
For the foregoing reasons, we conclude that Boehringer‘s terminal disclaimer does not overcome obviousness-type double patenting with respect to the ‘086 patent, but that the safe-harbor provision of
REVERSED and REMANDED
COSTS
Costs to Boehringer.
The majority has adopted a construction of section 121 that significantly expands its coverage.
I
The prohibition against double patenting contained in
Section 121 was adopted as part of the 1952 Patent Act, Pub.L. No. 82-593, 66 Stat. 792 (current version at
Section 121 was designed to ameliorate the inequity of this rule, and to allow applicants to reasonably rely on an examiner‘s restriction requirements. Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1361 (Fed.Cir.2008). The purpose of the rule was to ensure that “when the existence of multiple patents is due to the administrative requirements imposed by the Patent and Trademark Office ... the
II
I agree with the majority that section 121 is not limited to the first divisional application filed as a result of the restriction requirement, but extends to later divisional applications filed “as a result of” the restriction and that are consonant with the restriction requirement.
However, as the majority at least purportedly recognizes, the “as a result of” and consonance requirements must be satisfied by both the reference patent and the challenged patent. Majority Op. at 1352 (citing Bristol-Myers Squibb Co. v. Pharmachemie B.V., 361 F.3d 1343, 1347-48 (Fed.Cir.2004) (“As section 121 has been interpreted by this court, [the patentee] is entitled to invoke the statutory prohibition against use of the [reference] patent ‘as a reference’ against the divisional application that resulted in the [challenged] patent only if the divisional application was filed as a result of the restriction requirement and is consonant with that restriction requirement.“)). Thus, it is not enough that the original application was filed as a result of the restriction requirement; the subsequent contested patent application itself must have been the result of the restriction, and must be consonant with the restriction requirement. See Pfizer, 518 F.3d at 1360 (“[T]he third sentence of [section 121] provides a safe harbor (for patents or applications derived as the result of a restriction requirement) from attack based on the original application (or a patent issued therefrom), or based on applications or patents similarly derived from the same restriction requirement.” (emphases added)). We have held that section 121 should only be used to protect those applicants who are compelled to comply with a restriction imposed by a patent examiner, and who faithfully follow the restriction requirement in a later application. See, e.g., Texas Instruments Inc. v. U.S. Int‘l Trade Comm‘n, 988 F.2d 1165, 1179 (Fed.Cir.1993) (holding that the post-restriction addition of a claim to the divisional application was “consonant with the grouping restriction actually imposed by the examiner,” and thus the safe harbor of section 121 applied (emphasis added)).
III
In my view, the majority has misinterpreted both the “consonance” and “as a result of” requirements. Necessary to an understanding of these issues is an understanding of the actual restriction requirement imposed by the examiner in this case. The examiner of the ‘947 application (the grandparent) imposed a restriction requirement, thus requiring the filing of a later divisional application (the ‘197 parent application), which later matured into the ‘086 patent.2 The examiner imposed the
The ‘197 application (the parent), a divisional of the ‘947 application, was not consonant with the original restriction requirement, as the applicants combined in a single application claims that the original examiner determined were drawn to separate inventions, namely Groups VIII, IX, and X of the ‘947 application.3 The child application (the ‘671 application) was also not consonant because it contained separate inventions, namely claims encompassing Groups I, III, IV, and V of the ‘947 application.4
Despite the fact that the ‘197 and the ‘671 applications impermissibly combine claims drawn to independent and distinct inventions identified by the original examiner, the majority concludes that the consonance requirement is met. The majority concludes that the requirements of section 121 are met because “[n]one of the inventions claimed as between the ‘374 original patent, the ‘086 division, and the ‘812 division of the division, crosses the examiner‘s lines of demarcation of inventions identified in the restriction requirement.” Majority Op. at 1354. It is unclear what the majority means by stating that the “inventions” here did not cross the examiner‘s “lines of demarcation of inventions.” It is not the inventions that must preserve the examiner‘s line of demarcation among separate inventions, but rather, the applications that must be consonant with the restriction requirement. Here it is clear that the patent examiner‘s line of demarcation between independent and distinct inventions was not preserved, as is required by our case law, because both the parent and the child applications combined distinct inventions.
September 4, 1986: PTO examiner issues a restriction requirement forcing Boehringer to separate the inventions claimed in the ‘947 patent application. November 23, 1987: Boehringer files the ‘197 application, a divisional of the ‘947 application. March 15, 1988: ‘374 patent issues from the ‘947 patent application. October 12, 1988: Boehringer files the ‘671 application, a divisional of the ‘197 application. June 27, 1989: ‘086 patent issues from the ‘197 application. December 12, 1989: ‘812 patent issues from the ‘671 application.
To support its position that later divisional applications need not comply with the restriction requirement, the majority cites language from our case law for the proposition that section 121 is satisfied if later divisional applications are limited to the “non-elected invention or inventions” of the parent application. This suggests to the majority that separate inventions may be combined in a single later application. But our decisions do not in fact countenance this. In my view, the majority‘s decision is inconsistent with our case law clearly establishing that “[c]onsonance requires that the line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained.” Gerber Garment Tec., Inc. v. Lectra Sys. Inc., 916 F.2d 683, 688 (Fed.Cir.1990); see Geneva Pharms., 349 F.3d at 1381 (“Section 121 shields claims against a double patenting challenge if consonance exists between the divided groups of claims and an earlier restriction requirement.” (citing Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1569 (Fed.Cir.1991))); Applied Materials, 98 F.3d at 1568 (noting that “the examiner‘s demarcation among the separate inventions should be preserved” (emphasis added)).
In Texas Instruments Inc. v. U.S. International Trade Commission, 988 F.2d 1165 (Fed.Cir.1993), the original examiner found that the claims of the original application were drawn to three separate inventions, and grouped the claims in Groups I, II, and III. Id. at 1179. The applicant duly followed the restriction requirement laid out by the examiner and separated out the claims into three separate patents, with claims drawn to Group I issuing as the original patent (the ‘238 patent), and claims drawn to Group II and III issuing as divisionals of the parent application (the ‘027 and the ‘764 patent, respectively). However, the examiner‘s description of what was contained in Group III differed from the actual grouping in the restriction requirement, which in fact incorporated a claim drawn to Group II. The Commission held that the “actual restriction groupings, not the written descriptions thereof, control for purposes of ascertaining if subsequent amendments to original claims are consonant with the substantive restrictions drawn by the examiner.” Id. We adopted this reasoning, and concluded that the inclusion of the claim drawn to Group II in the ‘764 patent was “consonant with the grouping restriction actually imposed by the examiner.” Id. (emphasis added). In other words, the later application was consonant because the applicant followed the original examiner‘s groupings. That was not done here, and consonance accordingly was not maintained.
Applied Materials, Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563 (Fed.Cir.1996), is to the same effect. There, the examiner issued a restriction requirement and divided the claims into three groups: an oven-type radiation-heated reactor, a reactor with means for introducing gaseous reactants, and a gaseous epitaxial coating process. The applicant initially elected the radiation-heated reactor, then “duly prosecuted
But even if the majority were correct as to consonance, the benefit of the section 121 safe harbor should be denied because the ‘671 child application which issued into the ‘812 patent was not filed “as a result of” the restriction requirement. The only justification the majority offers for concluding that the “as of result of” requirement is met in this case is that the restriction requirement was imposed with respect to the grandparent application, resulting in the filing of one or more later divisional applications. But this rationale completely fails to explain why the child is protected from the parent application as a reference. There is in fact no basis for protecting the child against the use of the parent application as a reference, since there is absolutely nothing in the majority‘s reading of the original (grandparent) restriction that in any way required separation of the child from the parent. Nor did the examiner of the parent application require separation of the child. The second examiner did not follow the reasoning or views of the first examiner as to the distinctiveness of the various inventions. In other words, the child was not separated from the parent “as a result of” the restriction requirement, but rather as the result of the applicant‘s voluntary choice. Since the separation was not “due to the administrative requirements imposed by the Patent and Trademark Office,” id. at 1568, the child application should not be afforded the protections of section 121 with respect to the parent application.
The majority opinion not only fails to follow a “strict test” for the application of section 121, see Geneva Pharms., 349 F.3d at 1382, it fails to recognize any meaningful restriction on section 121‘s application in the present context. Under the majority‘s theory, if an applicant faced with a restriction requirement filed a series of divisional applications claiming essentially the same invention or an obvious variant again and again, each successive application would be protected from all of the earlier applications—whether or not the later applications followed the original restriction requirement. None of the earlier applications could be cited as prior art. Thus, the applicant could thereby have achieved multiple unjustified extensions of the patent term. The potential for this abuse is illustrated in this case: by breaking up the parent and child applications while ignoring the line of demarcation between patentably distinct inventions drawn by the first examiner, Boehringer was able to extend the term of the ‘812 patent (the child) six months longer than the ‘086
I respectfully dissent.