Federal Circuit finds that inequitable conduct not imputed by mere filing of Terminal Disclaimer

In Pharmacia Corp. v. Par Pharm., 417 F.3d 1369 (Fed Cir. 2005), Defendant filed an Abbreviated New Drug Application (ANDA) in order to sell a generic version of Plaintiff’s patented glaucoma medication.  Due to the ANDA, Plaintiff filed a patent infringement suit alleging infringement of U.S. Patent No. 5,296,504 (the ’504 patent) and U.S. Patent No. 5,422,368 (the ’368 patent).  At trial, Defendant was able to show that Plaintiff had conducted inequitable conduct in regards to the ‘368 patent due to inaccuracies in a Declaration used to overcome a rejection during prosecution.  The Defendant further asserted that, since a Terminal Disclaimer was filed in the ‘368 patent in response to an obviousness type double patenting rejection in view of the ‘504 patent, the two patents were linked such that the inequitable conduct in the ‘368 patent also exists in the ‘504 patent.   The Federal Circuit held that, while the Declaration did support a finding of inequitable conduct for the ‘368 patent, the mere filing of a Terminal Disclaimer did not impute the inequitable conduct to the ‘504 patent.  Specifically, the Federal Circuit noted that the Terminal Disclaimer merely reflects a judicial policy to limit the term of related patents, but that “[b]eyond their shared expiration date, …two disclaimed patents maintain significant attributes of individuality.”  As such, without more, the filing of a Terminal Disclaimer will not impute inequitable conduct between disclaimer patents and allows the patents to be separately enforceable.

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