Abbvie Inc. v. Mathilda & Terence Kennedy Inst.

If a patent is distinguishable as a narrower species of a dominate patent, the patent holder must demonstrate an unexpected result.

(Dyk): AbbVie, Inc. and AbbVie Biotechnology Ltd. (AbbVie, collectively) sued The Mathilda and Terrance Kennedy Institute of Rheumatology Trust (IRT) as licensors of one of two patents held by IRT. AbbVie holds the license to patent 7,846,442 (442), but not patent 6,270,766 (766). AbbVie claimed that the patent 766 was not “patentably distinct” from patent 442 and was therefore invalid under the doctrine of obviousness-type double patenting. The District Court for the Southern District of New York granted judgment in favor of AbbVie, and declared patent 422 invalid. IRT appealed arguing that even though the 776 patent was the dominant patent, the 442 patent was patentable because it claims a “narrower species” of rheumatoid arthritis treatment that produces “unexpected results.” IRT argued that the policy reasons that were the impetus for prohibiting double patenting no longer exist and argued for abandonment of the doctrine. The court stated that the purpose for the prohibition is to avoid inventors claiming duplicate patents to extend the term of their monopoly and that this problem still exists. The obviousness-type double patenting analysis involves two steps, first the court examines the claims of the two patents to determine the differences and then the court examines the differences to determine whether the patents are distinct. IRT’s patents satisfied the first level of analysis but did not demonstrate the unexpected results necessary to satisfy the second step. As a result, the judgment of the district court is AFFIRMED.