Recent Developments in Obviousness-Type Double Patenting

In Allergan USA, Inc. v. MSN Laboratories Private Ltd. (Fed. Cir. 2024), the Federal Circuit dealt with the issue of whether the claims of a first-filed, first-issued, later-expiring patent can be invalidated under the doctrine of obviousness-type double patenting (ODP) by the claims of later-filed, later-issued, earlier-expiring reference patents all having a common priority date.  The Federal Circuit held that the later-expiring patent cannot be invalidated by the earlier-expiring reference patents.  The Federal Circuit distinguished over In re Cellect, LLC, 81 F.4th 1216, 1228–29 (Fed. Cir. 2023), in which it held that ODP for a patent that has received patent term adjustment (PTA), regardless of whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added.  The Federal Circuit found that Cellect was only controlling in the present case to the extent that it required considering, in the ODP analysis, the expiration date of the later-expiring patent after the addition of PTA, not the expiration date that it would have shared with the reference patents in the absence of a PTA award.  The Federal Circuit declined to hold that the later-expiring patent must be invalidated by the reference patents simply because it expires later.  The Federal Circuit concluded that the claims of the reference patents were not proper ODP references that can be used to invalidate the claims of the later-expiring patent.  It found this to be the only conclusion consistent with the purpose of the ODP doctrine.

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