Obviousness Type Double Patenting Does Not Require Later-Issued Patent With Shorter Term to Abridge Term of Earlier-Granted Patent With Longer Term

Following a bench trial, the court found that plaintiffs' cinacalcet drug patents were not invalid for obvious-type double patenting. "Because of the change in patent terms as of June 8, 1995, the '068 and '003 patents on the genera compounds will expire after the later-filed and later-granted '244 patent on the species. Defendants argue that the '068 and '003 patents impermissibly extend patent protection to cinacalcet beyond the term granted by the '244 patent. . . . Normally, the later species patent term will expire after the earlier genus patent's term. Here . . . the legal changes to the patent terms, the timing of the applications, and the length of prosecution caused the species patent term to expire before the genus. . . . Here, even if the claims in the [later-filed] patent were identical to those in the [earlier] patents, the [later] patent's term could not extend the patent protection to which plaintiffs were already entitled on the [earlier] patents. Accordingly, the court finds that the later-filed, later-issued [patent] could not and did not create an 'unjustified timewise extension' of the earlier-filed, earlier-issued [patents]."

Brigham and Women's Hospital Inc., et. al. v. Teva Pharmaceuticals USA Inc., et. al., 1-08-cv-00464 (DED January 7, 2011, Order) (Bartle, C.J.)