On July 28, the U.S. Court of Appeals for the Federal Circuit in Sun Pharmaceutical Indus. Ltd. v. Eli Lilly Co., 611 F.3d 1381 (Fed. Cir. 2010), issued an important ruling on double patenting. The double patenting doctrine precludes an applicant from obtaining more than one valid patent for either the same invention (“statutory double patenting”) or for an obvious variation of the invention (“obviousness-type double patenting”). The purpose of both types of double patenting is to prevent an unjust patent-term extension resulting from a later patent. While acknowledging the general rule that the specification of an earlier patent is not available to show double patenting against a later patent, the court nevertheless held that the entire specification of an earlier patent must be examined to construe claims in the earlier patent during double-patenting analysis. On Nov. 1, the court declined to rehear this case by a 5-4 majority. 625 F.3d 719 (Fed. Cir. 2010).

Sun resulted from an appeal by Eli Lilly from a district court decision that found certain claims invalid for obviousness-type double patenting over an earlier patent. The earlier patent discloses gemcitabine and its antiviral and anti-tumor activities but only claims the compound gemcitabine and its use for treating herpes viral infections. The later patent claims a method of treating cancer using gemcitabine.

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