The Danger Of Double Patenting

In St. Jude Medical, Inc. v. Access Closure, Inc., the Federal Circuit found that one of St. Jude's patents was invalid under the doctrine of obviousness-type double patenting. This case highlights the potential difficulty of maintaining consonance with an original restriction requirement in a multi-generational patent family.

The Patent At Issue

Although there were three St. Jude patents at issue in the case before the Federal Circuit, only one was caught up in the double patenting issue, U.S. Patent 7,008,439 (the Janzen patent).

The Janzen patent stems from a grandparent application that was subject to a restriction requirement that restricted the claims along the following lines: