Gilead Sciences, Inc. v. Natco Pharma Limited

753 F.3d 1208 (2014)

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Nature of the Case

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Facts

The '375 and '483 patents were issued to the same inventors and are commonly owned by P. The '375 and '483 patents are not part of the same family of patents and were not before the same patent examiner. P crafted a separate 'chain' of applications, having a later priority date than the '375 patent family. That separate chain resulted in the issuance of the '483 patent. Because the patents do not claim priority to any common application, they will expire at different times. After the '483 patent issued, P filed a terminal disclaimer in the application that led to the '375 patent. Through it, P disclaimed any portion of the '375 patent term that extended beyond the expiration date of the '483 patent-which, absent abandonment, would not occur since the '375 patent's expiration date is before the '483 patent's expiration date. No terminal disclaimer was filed for the '483 patent. In March 2011, P filed the current suit against D, alleging D's New Drug Application infringed the '483 patent. D asserted that the '483 patent was invalid for obviousness-type double patenting in light of claim 8 of the '375 patent. In December 2012, the district court granted summary judgment in favor of P on D's double patenting defense. The court concluded that 'a later-issued but earlier-expiring patent' cannot 'serve as a double-patenting reference against an earlier-issued but later-expiring patent.' The district court certified its summary judgment ruling for appeal under Rule 54(b) because D's 'only invalidity defense on the '483 patent' was obviousness-type double patenting.