Federal Circuit Finds Obviousness-Type Double Patenting Where Claims Recited Interchangeable Combinations of Genus and Species Elements

In In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Fed. Cir. 2008), Basell Poliolefine Italia, S.P.A. (“Basell”) appeals two decisions of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Inferences (“Board”) that affirmed the rejections of all claims of U.S. Patent 6,365,687 (“the ‘687 patent”) as unpatentable under 35 U.S.C. §§ 102(b) and 103(a) and the doctrine of obviousness-type double patenting.  The ‘687 patent’s pending claims generally involve the production of crystalline copolymers of alpha-olefines having four or more carbon atoms, using a catalyst obtained by reacting an aluminum alkyl with a titanium halide.

Federal Circuit Finds Patents Invalid under Obviousness Type Double Patenting Where the Species Issues Before the Genus

In In re Metoprolol Succinate Patent Litigation, 83 U.S.P.Q.2d 1545 (Fed. Cir. 2007), Lejus Medical AB filed application no. 690,197 (the ‘197 application) in 1985.  The ‘197 application described “delayed and extended release dosage forms of pharmaceutical compositions, including metoprolol succinate.”  During prosecution, an inventorship dispute arose between Lejus and Astrazeneca. As a result of a settlement resulting from this inventorship dispute, Lejus agreed to divide the claims in the ‘197 application into claims to “metoprolol succinate,” which was to be owned by Astrazeneca, and claims to “pharmaceutical composition, characterized by the active substance is metoprolol succinate” to be owned by Lejus.  Lejus cancelled the claims to the metoprolol succinate in the ‘197 application, and subsequently filed a continuation application to the metoprolol succinate, which it assigned to Astrazeneca.  Lejus continued prosecution of the ‘197 application for the remaining claims, which eventually resulted in U.S. Patent 4,780,318 (the ‘318 patent) in 1988.  Claim 8 if the ‘318 patent claims: 8. 

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