The US Court of Appeals for the Federal Circuit endorsed for the
first time the "all substantial rights" test to determine
whether inventions are commonly owned for purposes of
obviousness-type double patenting validity analysis of a later
patent. Immunex Corp. v. Sandoz, Inc., Case No. 20-1037
(Fed. Cir. July 1, 2020) (O'Malley, J.) (Reyna, J.,
dissenting). The Court determined that patents were not commonly
owned—and therefore a later patent was not invalid for
obviousness-type double patenting—when the patentee retained
a secondary right to sue for infringement and the right to
"veto" further assignment of the patents by the
grantee.
Roche licensed a family of patent applications to Immunex. Under
the license agreement, Immunex agreed to pay a running royalty to
Roche based on sales of products incorporating the patented
technology. Non-party Amgen subsequently acquired Immunex. Amgen,
Immunex and Roche entered into an agreement to eliminate the
continuing
