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Federal Circuit invalidates Patent on Nobel-Prize winning invention after 50 years of prosecution
December 16, 2008
In an appeal from the Board of Patent Appeals and Interferences, the Federal Circuit affirmed the Board's rejection of the claims based upon obviousness-type double patenting over previously-granted related patents. The technical aspects of the invention are complex, but are overshadowed by the procedural aspects of this reexamination. The majority and dissenting opinions seem to discuss two different cases. The majority holds the double patenting issue was available in the reexamination under the former § 303 (in part because the rejection at issue was made after the amendment), and the dissent holds the reexamination improper because the issue was previously considered. The majority holds the expert declarations unpersuasive, but the dissent considers them unrebutted. In the end, the rejections are affirmed, even though the patents covered an invention that resulted in a Nobel Prize to one of the inventors.More detail of In re Basell Poliolefine Italia S.P.A. after the jump.U.S. Patent No. 6,365,687 issued in the name of the inventors Natta, Pino, and Mazzanti on April 2, 2002, and to the assignee Basell Poliolefine Italia S.P.A. The patent relates to polymerization of olefins, and claims priority through a chain of applications to an initial application filed in 1954. Dr. Natta, along with another scientist, was awarded the Nobel Prize in 1963 for the discoveries disclosed in the early applications. Nine weeks after the patent issued, the PTO, in a rare move, initiated reexamination based upon double patenting in view of two earlier expired patents issued to Natta, patents 3,256,235 and 3,403,139. During examination, the Examiner added double patenting rejections based upon two further expired Natta patents, 3,317,496 and 3,582,987.In March, 2005, the Board affirmed the double patenting rejections. First, the Board determined that the patentees were entitled to a one-way, rather than a two-way test for double patenting because the patentee significantly controlled the rate of prosecution throughout the chain of ancestral applications. After a second appeal to the Board to deal with issues relating to the priority date and potentially intervening prior art, the Board finalized the obviousness-type double patenting rejections based upon the numerous Natta patents. The Federal Circuit reviews double patenting (a question of law) de novo. On appeal, the patentee argued the Board erred in four ways:: (1) the '987 patent was considered during original prosecution of the '687 patent and thus cannot be considered during reexamination under 35 U.S.C. § 303 as it existed at that time reexamination was initiated (§ 303 was later amended to allow for reexamination based upon substantial questions of patentability raised by references previously cited by the Examiner); (2) the Board improperly dismissed declaration evidence; (3) the Board failed to conduct a full obviousness analysis under Graham; and (4) the Board failed to apply two-way obviousness type double patenting analysis.The Federal Circuit rejected each of Basell's arguments. The court first addressed the type of analysis to be applied, and explained that the one-way test for determining double patenting normally applies, except in unusual circumstances where the first-filed application has not yet issued by the time the second filed application issues. The one-way test asks whether the application claims are obvious over the patent claims. The two-way test is a narrow exception to the general rule of the one-way test, and requires the examiner to also consider "whether the patent claims are obvious over the application claims."The majority characterized the prosecution of the series of applications much differently than the dissent. According to the majority:
The record shows that the patentees did not present any claim resembling the claims at issue until 1964, nine years after Natta filed the first U.S. application in the chain of priority and well after Natta filed the application that resulted in the '987 patent. Moreover, those claims appear to have been filed for interference purposes only. In addition, the Board found that since 1954, the patentees repeatedly submitted claims directed to claims covering other inventions, urged the examiner to declare interferences for unrelated inventions, and repeatedly filed continuing applications without appeal. During the critical co-pendent period of the applications for the '687 patent and the '987 patent, Natta could have filed the present claims. Natta's actions, or inactions, had a direct effect on the prosecution and thus were responsible for any delay in prosecution. We find no error with regard to the Board's findings and agree with the Board that the two-way test for double patenting does not apply.
As a result, the majority held it was correct to apply the one-way test for double patenting. According to Judge Newman's dissent:
The PTO criticizes the long period from initial filing to issuance of the Natta '687 patent. It is indeed extraordinarily long. However, the reexamination examiner acknowledged that there were "PTO delays due to multiple interferences which occurred from the 1950's up to 1984 or 1985," while also stating that the applicant "caused a substantial number of delays from 1985 to 2000." The latter period included an appeal to this court, during which the PTO moved for remand in order to conduct additional examination. The record shows no violation by the applicant of the PTO's rules and procedures, or any significant departure from standard practices, in Natta's participating in time-consuming procedures.The delays due to patent interferences are notorious, and here there were three, involving multiple parties and multiple countries. Interference delays generally flow from not only the complexity of the subject matter and requisite proofs, but also the due process that PTO procedures assure in these complex inter partes proceedings, including the rights of appeal and the authorized judicial proceedings. It may well be that the PTO has been unfairly criticized for the lengthy pendency illustrated by this patent; however, it is equally unfair to chastise this patentee, when most of the delay was agreed by the PTO to be due to its procedures.
The court also rejected Basell's assertion that the '987 patent could not be relied upon because it was previously considered during the original prosecution period. According to the majority, the '987 patent was cited during the prosecution of a different patent application, with different claims than the claims at issue, and which was ultimately abandoned. As a result, it was not previously considered under § 303, and could be relied upon. Interestingly, the majority also observed in a footnote that because the actual rejection was made after the statute was amended, it was subject to the new statute even though the reexamination was initiated under the old statute. Judge Newman disagreed with this assessment, and, based on statements made in the reasons for allowance that the obviousness-type double patenting had been withdrawn, would have held the issue to have been previously considered and therefore unavailable as a ground for reexamination.Turning to the merits, the court identified the critical question as whether the claims of the '687 patent define an obvious variation of the claims of the '987 patent. After reviewing the technical aspects of these patents, the court agreed with the Board that the '687 claims were not patentably distinct from claim 1 of the '987 patent. The court agreed the claims of both patents consist of various permutations of polymerization of olefins with various numbers of carbon atoms using catalysts of titanium halides and aluminum alkyls. The court also disagreed with Bassell's argument that the Board failed to consider the expert declarations, citing the Board's 2005 decision which found the declarations unpersuasive, albeit without explanation. Finally, the court did not take issue with the lack of an explicit Graham obviousness analysis, stating it was unnecessary to specifically call out each factor so long as the analysis was proper. As a result, the majority affirmed the rejection of the claims.Judge Newman disagreed with the majority's ultimate conclusion as well, pointing out "the PTO had consistently found that the claims of the '687 Natta patent were patentably distinct from the claims of the '987 Natta patent. In both the examination and the reexamination, the examiners found that the classes of copolymers and catalysts in the '687 claims were patentably distinct from those claimed in the '987 patent." She also noted the expert declarations were unrebutted, noting the "record contains no contrary authority, no citations or references or arguments," other than the majority's conclusion. Accordingly, Judge Newman would have held there was no double patenting.To read the full decision in In re Basell Poliolefine Italia S.P.A., click here.
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