Delay in Presenting New Claims Not a Basis for Double Patenting Rejection

The U.S. District Court for the District of Columbia overturned a decision by the Board of Patent Appeals and Interferences (the Board) of the U.S. Patent and Trademark Office (USPTO), affirming an examiner’s refusal to grant a reexamination certificate because the patent’s claims were allegedly invalid for obviousness-type double patenting. Takeda Pharmaceuticals Co., LTD., v. Dudas, Civ. No. 06-1640 (D.D.C., Sept. 18, 2007) (Hogan, C.J.).

Issued in 1996, U.S. Patent No. 5,583,216 (the ’216 patent) claims priority back to 1974. The second patent in this priority chain, U.S. Patent No. 4,298,606 (the ’606 patent), claims chemicals referred to as cephem products and discloses methods for making them. It was not until 1990 that Takeda actually filed claims directed to the methods, which ultimately issued in the ’216 patent. In 1998, an anonymous third party requested reexamination of the ‘216 patent, alleging that cephem product claims of the ’606 patent rendered the process claims of