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ARTICLE · 16 OCTOBER 2012

Federal Circuit Clarifies Obviousness-Type Double Patenting Between Products And Methods

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In "Eli Lilly and Company v. Teva Parenteral Medicines, Inc"., the Federal Circuit affirmed the district court’s decision that Eli Lilly’s patent to pemetrexed is not invalid.

United StatesIntellectual Property
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In Eli Lilly and Company v. Teva Parenteral Medicines, Inc., the Federal Circuit affirmed the district court's decision that Eli Lilly's patent to pemetrexed is not invalid for obviousness-type double patenting. The Federal Circuit's decision provides important guidance on one of the most complex areas of U.S. patent jurisprudence, and explains how information in the specification can be used in a double patenting analysis, discusses when obviousness-type double patenting may arise between product and method claims, and notes that unexpected results may be relevant to obviousness-type double patenting.

The Patent at Issue

The patent at issue, U.S. Patent 5,344,932, relates to Eli Lilly's Alimta® (pemetrexed) product, which is used in the treatment of advanced nonsquamous non-small cell lung cancer. Claims 1, 2 and 7 recite Markush groups that encompass a number of structurally related antifolate compounds, including pemetrexed. Claim 3 is directed specifically to

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