In Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., C.A. No. 08-335-GMS (D. Del. Jul. 28, 2011), Chief Judge Sleet ordered that the plaintiffs’ patent was not invalid for obviousness-type double patenting.
The Order was based on Chief Judge Sleet’s consideration of the parties’ proposed post-trial findings of fact and conclusions of law following a five-day bench trial in November 2010. The defendants argued that the patent at issue was invalid because, inter alia, examples in an earlier patent specification disclosed the utility of a particular compound as it pertained to making the compound in the later patent. Chief Judge Sleet disagreed with this argument for two reasons: (1) this was not a case in which “separate patents are sought for a claim to a compound and a claim to using that compound for the disclosed utility of the original compound[;]” and (2) the defendants impermissibly used examples from the earlier patent’s specification as if the specification were a prior art teaching in the obviousness-type double patenting analysis, which would have constituted “an improper use of hindsight knowledge of [the later compound] in determining whether [the later compound] would have been an obvious variant of [the earlier compound.]” Id. at 4-5.
Additionally, Chief Judge Sleet concluded that a person of ordinary skill in the art would not have “immediately recognized” the earlier compound as an intermediate used to make the later compound. Id. at 6. Nor would a person of ordinary skill in the art have a reason to make the later compound among the many other compounds suggested by the earlier compound because, during the relevant time period, the later compound was not a preferred compound and the changes suggested by the defendants would have yielded an “undesirable” result. Id. at 6-7.