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May 16, 2011



I gather from your piece that you believe this deviates from precedent and CAFC will recognize that in a future case, and that therefore this is not setting a new precedent, but an anomaly. Can one be sure of that, or is this a new precedent, albeit possibly transient and metastable?

I don't see how this would not be precedent as of now, transient or otherwise. Patentees would be well-advised to scour the non-prior art specifications of their earlier-issued patents for any hint of disclosures that spell out - or suggest - uses or methods that were claimed in later-issued patents.
I think this case is extremely troubling - this has nothing to do, as Kevin noted, with the improper extension of the patent right that the doctrine originally tried to get at. It's a simple game of "gotcha" that the patentee couldn't have foreseen.

Dear Bob:

Moocow is correct, that this opinion is precedential and should be followed by subsequent panels unless and until the court decides the issue en banc. Mrs. Noonan has no children befuddled enough to predict what the Federal Circuit (or any court) will decide, but the decision to rehear en banc was decided 5-4, with several of the most senior judges voting to rehear the case (including the Chief Judge). Since the decision, Judges O'Malley and Reyna have joined the court, and there is another judge still to be confirmed. Thus, there is a good chance that the next time a party requests rehearing en banc the court will grant it (the court has chosen in recent years to hear several cases involving particular patent law areas, including subject matter eligibility, written description and inequitable conduct). So this decision could be subject to "correction" under the right circumstances.

And the opportunity should arise, since OTDP has become the "defense du jour" in ANDA litigation.

Thanks for the comments.

Kevin, I'm confused as to why the original CAFC panel decision in this case is considered precedential. If a panel within a federal appellate court decides an issue of first impression, then that ruling becomes binding on subsequent panels presented with the same question, unless and until the earlier ruling is overturned by an en banc decision of that appellate court. But that's not what transpired here: instead, there's an earlier CAFC panel decision that says OTDP analysis must be conducted comparing only the *claims* of the patent with the claims of the still-pending application (or later-issued patent). So this panel decision should be a nullity. Of course, Judges Prost, Gajarsa and Bryson knew this and ignored it; there's no reason to expect them to reverse themselves now and adhere to precedent. So I agree that practically, patentees may lose patents as a result of this decision. But that doesn't make it precedential, it just means that some CAFC judges ignore the rules governing their own court.

Also, regarding the statement "Thus, the '614 patent was entitled to the priority claim to the original patent while the '826 patent was not", I disagree: the '614 patent is only entitled to the earlier priority to the extent that what was disclosed and claimed in the '614 patent was also disclosed throughout the continuation/divisional chain. Here, the anti-cancer properties and uses were disclosed for the first time the concurrently-filed applications that led to the '614 and '826 patents. So as far as anti-cancer goes, both were only entitled to the same filing date; '614 wasn't entitle to priority for anti-cancer. The '614 would have been entitled to the earlier filing date with respect to anti-viral properties and uses, had such been claimed therein, but they weren't.

Dear Dan:

To address the second point first, you are correct - but since the '826 patent was only directed to the anti-cancer methods, my point was that the '614 patent was the "earlier-filed" one even though both the '614 and '826 applications were filed on the same day.

As for its precedential effect, on the trivial side the case was "precedential" rather than "non-precedential," but more importantly at least 5 members of the court "agree" with it (or at least don't believe that the decision was incorrect enough to merit en banc review). Just using combinatorial statistics there will be about an equal likelihood that future panels with consist of a majority made up of the judges who voted not to rehear the appeal en banc. So functionally the court has changed the law in a way that is precedential in every way that matters.

Thanks for the comment.

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