In Re Hubbell

United States Court of Appeals

for the Federal Circuit

______________________

IN RE JEFFREY HUBBELL, JASON SCHENSE,

ANDREAS ZISCH, AND HEIKE HALL

______________________

2011-1547

(Serial No. 10/650,509)

______________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

______________________

Decided: March 7, 2013

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RIVKA D. MONHEIT, Pabst Patent Group LLP, of Atlan-

ta, Georgia, argued for appellant. With him on the brief

was PATREA L. PABST.

FRANCES M. LYNCH, Associate Solicitor, United States

Patent and Trademark Office, of Alexandria, Virginia,

argued for appellee. With him on the brief were RAYMOND

T. CHEN, Solicitor, and AMY J. NELSON, Associate Solici-

tor.

______________________

Before NEWMAN, O’MALLEY, and WALLACH,

Circuit Judges.

Opinion for the court filed by Circuit Judge O’MALLEY.

Dissenting opinion filed by Circuit Judge NEWMAN.

2 IN RE HUBBELL

O’MALLEY, Circuit Judge.

Jeffrey Hubbell, Jason Schense, Andreas Zisch, and

Heike Hall are the named inventors on U.S. Patent Appli-

cation No. 10/650,509 (“the ’509 application”). The exam-

iner rejected all of the pending claims – claims 1-5, 7, 9-

14, 16-22, 26-30, 34, and 35 – for obviousness-type double

patenting over several patents, including U.S. Patent No.

7,601,685 (“the ’685 patent”). Hubbell appeals from the

decision of the Board of Patent Appeals and Interferences

(“the Board”) affirming the examiner’s final rejection with

respect to the ’685 patent. Ex parte Jeffrey Hubbell,

Jason Schense, Andreas Zisch, and Heike Hall, No. 2010-

004497, 2011 Pat. App. LEXIS 19847 (B.P.A.I. May 20,

2011) (“Board Decision”). Because the Board did not err

in concluding that the pending claims were barred under

the doctrine of obviousness-type double patenting, we

affirm.

BACKGROUND

A. FACTUAL BACKGROUND

The ’509 application, entitled “Enzyme-Mediated Mod-

ification of Fibrin for Tissue Engineering,” was filed on

August 27, 2003. 1 The invention relates generally to the

field of tissue repair and regeneration, and more specifi-

cally to matrices containing bidomain peptides or pro-

teins. Claim 18, which the parties agree is representative

1 The ’509 application is a continuation of Applica-

tion No. 10/024,918 (now abandoned), filed on December

18, 2001, which is a continuation-in-part of Application

No. 09/057,052, filed April 8, 1998, now U.S. Patent No.

6,331,422, which is a continuation of International Appli-

cation No. PCT/US98/06617, filed April 2, 1998, which

claims priority to U.S. Provisional Application Serial No.

60/042,143, filed April 3, 1997.

IN RE HUBBELL 3

of the pending claims, recites “[a] bidomain protein or

peptide comprising a transglutaminase substrate domain

and a polypeptide growth factor.”

The invention disclosed in the ’509 application was

based on research Jeffrey Hubbell and Jason Schense

conducted while Hubbell was a Professor of Chemical

Engineering at California Institute of Technology (“Cal-

Tech”) and Schense was obtaining his PhD at the same

institution. Two other CalTech researchers also assisted

Hubbell and are, thus, listed on the ’509 application as co-

inventors, Andreas Zich and Heike Hall. Because all of

the named inventors were affiliated with CalTech, the

’509 application is assigned to CalTech.

Hubbell left CalTech and joined the faculty at Eid-

genossische Technische Hochschule Zurich (“ETHZ”) in

1998 – roughly five years before the ’509 application was

filed. The application that issued as the ’685 patent was

filed on December 17, 2002, and is based on research

Hubbell and Schense conducted at ETHZ. The ’685

patent, entitled “Growth Factor Modified Protein Matrices

for Tissue Engineering,” issued on October 13, 2009, lists

Jeffrey Hubbell, Jason Schense, and Shelly Sakiyama-

Elbert as inventors, and is jointly assigned to ETHZ and

Universitat Zurich.

Claim 1 of the ’685 patent recites:

A fusion protein, comprising:

(i) a first protein domain;

(ii) a second protein domain; and

(iii) an enzymatic or hydrolytic cleavage site

between the first and second domains;

wherein the first domain is a growth factor select-

ed from the group consisting of the platelet de-

rived growth factor superfamily and the

4 IN RE HUBBELL

transforming growth factor beta (TGF[beta]) su-

perfamily;

wherein the second domain is a crosslinking Fac-

tor XIIIa substrate domain;

wherein the enzymatic cleavage site is selected

from the group consisting of proteolytic substrates

and polysaccharide substrates, and

wherein the hydrolytic cleavage site comprises a

substrate with a linkage which undergoes hydrol-

ysis by an acid or a base catalyzed reaction.

’685 Patent, col. 55, ll. 29-47.

It is undisputed that, although the ’509 application

and the ’685 patent have two inventors in common –

Hubbell and Schense – they do not have identical in-

ventive entities and have neither common owners nor

common assignees. 2

B. PROCEDURAL HISTORY

The ’509 application at issue on appeal is a continua-

tion of Application No. 10/024,918 (“the ’918 application”),

which was filed on December 18, 2001. The ’918 applica-

tion shares the same title and same inventors as the ’509

application on appeal, and was likewise assigned to

CalTech. During prosecution of the ’918 application, the

examiner rejected all of the pending claims based on

obviousness-type double patenting over U.S. Patent No.

2 The application for the ’685 patent was a continua-

tion-in-part of Application No. 09/563,760, filed on May 1,

2000, now U.S. Patent No. 6,894,022, which is a continua-

tion-in-part of Application No. 09/141,153, filed on August

27, 1998, now abandoned. Accordingly, though the ’685

patent issued first, it is not available as prior art under 35

U.S.C. §§ 102 or 103 against the claims in the ’509 appli-

cation.

IN RE HUBBELL 5

6,331,422 (“the ’422 patent”) and Application No.

09/695,466, which issued as U.S. Patent No. 6,607,740

(“the ’740 patent”) on August 19, 2003. Hubbell and

Schense are the named inventors on the ’422 and ’740

patents, and both patents were assigned to CalTech.

In response to the examiner’s rejection, Hubbell sub-

mitted two terminal disclaimers, amended certain claims,

and added new claims. The examiner indicated that

claims 1-17 of the ’918 application were allowable, and

Hubbell cancelled the remaining claims. Although the

examiner issued a Notice of Allowance in June 2003,

Hubbell failed to pay the issue fee within the statutory

period, let the ’918 application go abandoned, and instead

filed the ’509 application on August 27, 2003.

In a final Office Action dated October 5, 2007, the ex-

aminer rejected claims 1-5, 7, 9-14, 16-22, 26-30, 34, and

35 of the ’509 application for obviousness-type double

patenting over the ’422 and ’740 patents, the application

that issued as U.S. Patent No. 7,247,609 (“the ’609 pa-

tent”) to Lutolf, et al., and the application that issued as

the ’685 patent (Application No. 10/323,046). In relevant

part, the examiner found that the conflicting claims in the

’685 patent “are a species of the instantly claimed inven-

tion and as such are encompassed by the claimed inven-

tion and thus anticipate the claimed invention.” Board

Decision, 2011 Pat. App. LEXIS 19847, at *11. Hubbell

appealed the rejections to the Board.

On appeal, the Board reversed the examiner’s obvi-

ousness-type double patenting rejection over the ’609

patent and affirmed the rejections over the ’422, ’740, and

’685 Patents. Because Hubbell indicated that he would

file terminal disclaimers with respect to the ’422 and ’740

patents, the Board summarily affirmed those rejections.

That portion of the Board’s decision is not at issue on

appeal.

6 IN RE HUBBELL

Turning to the examiner’s rejection for obviousness-

type double patenting over certain claims in the ’685

patent, the Board agreed with the examiner that the

claims of the ’685 patent anticipate representative claim

18. Specifically, the Board found that claim 1 of the ’685

patent recites a protein that contains both of the features

required in rejected claim 18: “a transglutaminase sub-

strate domain (the crosslinking Factor XIIIa substrate

domain) and a domain encoding a growth factor.” Board

Decision, 2011 Pat. App. LEXIS 19847, at *13. The Board

also noted that claim 18’s use of the term “comprising”

allowed for inclusion of the additional elements recited in

claim 1 of the ’685 patent, including an enzymatic cleav-

age site not otherwise recited in claim 18. Accordingly,

the Board found the obviousness-type double patenting

rejection proper because the genus claim in the ’509

application was anticipated by issued claims directed to a

species falling within that genus.

Next, the Board rejected Hubbell’s argument that

common ownership is a requirement for obviousness-type

double patenting. It began its analysis by citing the

Manual of Patent Examining Procedure (“MPEP”), which

provides that: “[d]ouble patenting may exist between an

issued patent and an application filed by the same in-

ventive entity, or by a different inventive entity having a

common inventor, and/or by a common assignee/owner.”

MPEP § 804(I)(A) (emphasis added). The Board further

relied on this court’s prior case law regarding obvious-

ness-type double patenting in which we recognized a

“concern over potential harassment of an infringer by

multiple assignees asserting essentially the same patent-

ed invention,” even where there was no common owner-

ship. Board Decision, 2011 Pat. App. LEXIS 19847, at

*15 (citing In re Van Ornum, 686 F.2d 937 (CCPA 1982)

and In re Fallaux, 564 F.3d 1313 (Fed. Cir. 2009)). Given

this concern, the Board concluded that common ownership

is not required and that obviousness-type double patent-

IN RE HUBBELL 7

ing applied here because the earlier-issued ’685 patent

and the ’509 application share two common inventors.

Hubbell timely appealed that issue to this court, and we

have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Obviousness-type double patenting is a judicially-

created doctrine designed to “prevent claims in separate

applications or patents that do not recite the ‘same’ inven-

tion, but nonetheless claim inventions so alike that grant-

ing both exclusive rights would effectively extend the life

of patent protection.” Perricone v. Medicis Pharm. Corp.,

432 F.3d 1368, 1373 (Fed. Cir. 2005) (citation omitted). It

prohibits the issuance of claims in a second patent that

are “not patentably distinct from the claims of the first

patent.” In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985)

(citations omitted). A later patent claim “is not patenta-

bly distinct from an earlier claim if the later claim is

obvious over, or anticipated by, the earlier claim.” Eli

Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed.

Cir. 2001) (citations omitted).

There are two justifications for obviousness-type dou-

ble patenting. The first is “to prevent unjustified time-

wise extension of the right to exclude granted by a patent

no matter how the extension is brought about.” Van

Ornum, 686 F.2d at 943-44 (quotation and citation omit-

ted). The second rationale is to prevent multiple in-

fringement suits by different assignees asserting

essentially the same patented invention. Fallaux, 564

F.3d at 1319 (recognizing that “harassment by multiple

assignees” provides “a second justification for obvious-

ness-type double patenting”); see also Chisum on Patents

§ 9.04[2][b][ii] (“The possibility of multiple suits against

an infringer by assignees of related patents has long been

recognized as one of the concerns behind the doctrine of

double patenting.”). Obviousness-type double patenting is

a question of law that we review de novo. In re Emert,

8 IN RE HUBBELL

124 F.3d 1458, 1460 (Fed. Cir. 1997). We review the

Board’s factual findings for substantial evidence. See In

re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

On appeal, Hubbell does not dispute that Claim 1 of

the ’685 patent anticipates representative Claim 18 of the

’509 application. Instead, Hubbell argues that obvious-

ness-type double patenting should not apply where, as

here, an application and a conflicting patent share com-

mon inventors but do not have identical inventive enti-

ties, were never commonly owned, and are not subject to a

joint research agreement. In the alternative, if the court

finds that an obviousness-type double patenting rejection

is applicable, Hubbell argues that either he should be

allowed to file a terminal disclaimer as an equitable

measure or that this court should employ a two-way

obviousness analysis for the rejected claims.

In response, the Director argues that: (1) whether the

application and patent were ever commonly owned is

immaterial to the policy of preventing harassment by

multiple assignees; (2) identity of inventors is not re-

quired where there is an overlap in the inventors;

(3) Hubbell has not established any grounds upon which

he should be allowed to file a terminal disclaimer; and

(4) Hubbell is not entitled to a two-way obviousness

analysis because he admitted that he partially is respon-

sible for the delay that caused the ’685 patent claims to

issue first. 3 For the reasons explained below, we agree

with the Director on each point.

3 The Director also argues that Hubbell waived his

terminal disclaimer and two-way obviousness analysis

arguments by failing to raise them before the Board. In

response, Hubbell contends that these arguments relate

to the same issue presented to the Board: whether obvi-

ousness-type double patenting should apply in situations

where the application and conflicting patent are not

IN RE HUBBELL 9

A. OBVIOUSNESS-TYPE DOUBLE PATENTING

The first issue on appeal is whether obviousness-type

double patenting applies where an application and a

conflicting patent have one or more inventors in common

but the inventive entities are not identical and the appli-

cations were never commonly owned. Although Hubbell

argues that this issue is one of first impression, the Board

found that: (1) the MPEP specifically contemplates appli-

cation of obviousness-type double patenting in these

circumstances; and (2) this court’s prior case law supports

application of obviousness-type double patenting in in-

stances where there is no common ownership. We agree

with the Board.

First, as noted, the MPEP provides that obviousness-

type double patenting may exist between an issued patent

and an application filed by “the same inventive entity, or

by a different inventive entity having a common inventor,

and/or by a common assignee/owner.” MPEP § 804(I)(A)

(emphasis added). Although the MPEP is not binding on

this court, we can take judicial notice of this provision to

the extent it does not conflict with statutory text. Enzo

Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed.

Cir. 2002) (stating that the PTO Guidelines governing its

internal practice and the MPEP “are not binding on this

court, but may be given judicial notice to the extent they

do not conflict with the statute”). As discussed below,

moreover, the MPEP standard is consistent with the

commonly owned. Hubbell further argues that, since he

urges this court to permit filing of a terminal disclaimer

or application of the two-way test as an equitable meas-

ure, “[n]either of these remedies could have been granted

by the Board.” Appellants’ Reply 13. Regardless of

whether Hubbell waived these arguments, as discussed

below, we find them to be without merit.

10 IN RE HUBBELL

rationale we have used to support application of obvious-

ness-type double patenting rejections.

Hubbell’s primary argument is that obviousness-type

double patenting should never be applied in the absence

of common ownership of the applications at issue. We

have already rejected that contention. In Van Ornum, for

example, our predecessor court affirmed an obviousness-

type double patenting rejection over a patent with a

common inventor, despite a lack of common ownership.

In that case, as here, the claims in the application were

generic to the species claims in the patents on which the

double patenting rejection was based. Van Ornum, 686

F.2d at 938. Although the application and the patents

shared a common inventive entity, the inventors assigned

one of the patents to General Motors and assigned the

second patent, as well as the application at issue, to

Rockcor, Inc. Id. at 938-39. Because the application’s

generic claims “disclosed no additional invention or dis-

covery other than what ha[d] already been claimed” in the

prior patents, the court concluded that the double patent-

ing rejection was “fully justified.” Id. at 944. The court

further found that, because the application and conflicting

patents were not commonly owned, the applicants could

not file a terminal disclaimer to overcome the rejection.

See id. at 944-48 (approving the common ownership

requirement for terminal disclaimers set forth in 37

C.F.R. § 1.321). In reaching this conclusion, the court

recognized the importance of preventing harassment of an

alleged infringer by multiple assignees asserting essen-

tially the same patented invention.

Likewise, in Fallaux, this court reaffirmed the multi-

ple assignee harassment rationale and applied it to a

situation where, as here, the patents were related to the

application only by way of a common inventor. See

Fallaux, 564 F.3d at 1315 (“The reference patents for the

double patenting rejection on appeal – the Vogels patents

– are related to the Fallaux application only by way of a

IN RE HUBBELL 11

single common inventor – Abraham Bout.”). While this

court noted that neither party raised the issue of whether

a patent may be used as a reference for an obviousness-

type double patenting rejection where it shares only a

common inventor with the application, and cautioned that

the “opinion should not be read to decide or endorse the

PTO’s view on this issue,” it concluded that the harass-

ment justification for obviousness-type double patenting

is “particularly pertinent” in such circumstances. Id. at

1315 n.1, 1319. The court also pointed out that the lack of

common ownership in that case “was of the applicant’s

creation as through assignment it allowed ownership of

the applications to be divided among different entities.”

Id. at 1319.

On appeal, Hubbell argues that Van Ornum and

Fallaux are distinguishable because in those cases, unlike

here, the applications at issue were once commonly

owned. Hubbell also contends that Van Ornum should be

limited to its facts and that both Van Ornum and Fallaux

“should be read as standing for the proposition that in

situations where . . . the complaining party is ‘responsible

for’ the divided assignment, issuance of the second patent

is ‘impermissible and barred by the public policy of har-

assment by multiple assignees.’” Appellants’ Br. 15

(citations omitted). According to Hubbell, because Cal-

Tech did not control the ownership of the ’685 patent and

was not responsible for the divided assignment, obvious-

ness-type double patenting should not apply. Hubbell’s

arguments are not well-taken.

It is undisputed that the ’685 patent is assigned to

ETHZ and Universitat Zurich, whereas the ’509 applica-

tion is assigned to CalTech. While Hubbell is correct that

CalTech was not responsible for the bifurcated assign-

ment, the fact remains that, if Hubbell’s rejected applica-

tion claims were to issue, the potential for harassment by

multiple assignees would exist because an infringer of

claim 1 of the ’685 patent would also infringe at least

12 IN RE HUBBELL

rejected claim 18. As such, there is a risk that a potential

infringer could be subject to suit from both CalTech and

ETHZ and Universitat Zurich under their respective

patents. The fact that Hubbell controlled the assignment

by moving from one institution to another does not alter

this analysis.

Although Hubbell attempts to distinguish Van Ornum

and Fallaux on grounds that the applications involved in

those cases were once commonly owned, this distinction

does not alleviate the underlying harassment concerns

here. As the Director points out, the “possibility of har-

assment by multiple assignees exists when issued patents

lack common ownership. Thus, whether the applications

that led to the issued patents were ever commonly owned

is irrelevant.” Appellee’s Br. 16. And, as we recognized in

Fallaux, the harassment justification is “particularly

pertinent” in cases where, as here, the application and the

conflicting patent are not commonly owned.

Based on the foregoing, although Hubbell argues that

we should create a specific exception barring application

of obviousness-type double patenting in instances where

the conflicting claims share only common inventors,

rather than common ownership, we see no valid basis for

doing so. Because it is undisputed that an infringer of the

’685 patent would also infringe the ’509 application, the

multiple assignee harassment justification adopted in

Van Ornum and reaffirmed in Fallaux applies here,

despite the lack of common ownership.

While not the thrust of his contentions on appeal,

Hubbell also seems to argue that obviousness-type double

patenting should not apply where the overlap in inventor-

ship is not complete, i.e., where the inventive entities are

not identical in all respects. Here, Hubbell was the first

named inventor on both the ’590 application and the ’685

patent and Schense was the second. The ’509 had two

other named inventors and the ’685 patent had one. It is

IN RE HUBBELL 13

undisputed that this overlap in inventorship is precisely

the type of relationship that would give rise to double

patenting under the MPEP. Hubbell does not explain

why the MPEP is wrong to treat cases, like his, where the

overlap in inventorship is substantial any differently than

cases where the overlap is complete. We too can find no

reasoned basis to differentiate between cases involving

identical “inventive entities” and those where the in-

ventive entities are almost identical when assessing

obviousness-type double patenting rejections. Indeed,

Fallaux drew no such distinction and endorsed an obvi-

ousness-type double patenting rejection despite the ab-

sence of identity among inventors. 4

For these reasons, we reject Hubbell’s request that we

insist upon a complete identity of inventors or common

ownership as a prerequisite to an obviousness-type double

patenting rejection and find the Board’s rejection to have

been proper on the facts presented here.

B. TERMINAL DISCLAIMER

In the alternative, Hubbell argues that, if obvious-

ness-type double patenting does apply, we should author-

ize him to file a terminal disclaimer and thus avoid any

concern regarding undue extension of the rights granted

in the ’685 patent. As a general rule, a terminal disclaim-

er filed to overcome an obviousness-type double patenting

rejection is effective only where the application and

conflicting patent are commonly owned. See Fallaux, 564

F.3d at 1319 (“If the Fallaux application and the Vogels

patents were commonly owned, the terminal disclaimer

filed in this case would have been effective to overcome

the double patenting rejection.”). Indeed, 37 C.F.R.

4 On this point, we are unpersuaded by the dissents’

citation to an outdated version of the MPEP or to cases

which discuss the concept of an inventive entity in entire-

ly different contexts.

14 IN RE HUBBELL

§ 1.321(c)(3) specifically provides that a terminal dis-

claimer “filed to obviate judicially created double patent-

ing in a patent application” must include “a provision that

any patent granted on that application . . . shall be en-

forceable only for and during such period that said patent

is commonly owned with the application or patent which

formed the basis for the judicially created double patent-

ing.” 37 C.F.R. § 1.321(c)(3) (emphasis added).

Recognizing that there is neither common ownership

nor a common assignee here, Hubbell points to the Coop-

erative Research and Technology Enhancement Act of

2004 (“the CREATE Act”), which amended 35 U.S.C.

§ 103(c) to provide that otherwise unrelated persons can

be treated as common owners under the statute if:

(1) they are parties to a joint research agreement that was

in effect on or before the claimed invention was made;

(2) the claimed invention was made as a result of activi-

ties undertaken within the scope of the joint research

agreement; and (3) “the application for patent for the

claimed invention discloses or is amended to disclose the

names of the parties to the joint research agreement.” 35

U.S.C. § 103(c)(2)(A)-(C).

Because the ’509 application and the ’685 patent are

not commonly owned and there is no joint research

agreement between the assignees, Hubbell’s reliance on

the CREATE Act is misplaced. Although Hubbell argues

that this court should ignore the joint research agreement

requirement and nonetheless permit the filing of a termi-

nal disclaimer, there is no statutory basis for doing so,

and we decline Hubbell’s invitation to rewrite the statuto-

ry text by creating a new equitable right to resort to

terminal disclaimers. We conclude that, because Hubbell

does not qualify for a terminal disclaimer under the

statute, he is not entitled to file one as an equitable

measure.

IN RE HUBBELL 15

C. TWO-WAY OBVIOUSNESS ANALYSIS

Finally, Hubbell argues that the rejected claims

should be reconsidered under a two-way obviousness

analysis. As a general rule, a “one-way” test applies to

determine obviousness-type double patenting. In re Berg,

140 F.3d 1428, 1432 (Fed. Cir. 1998). Under that test,

“the examiner asks whether the application claims are

obvious over the patent claims.” Id. In certain circum-

stances, however, a two-way test may apply, wherein the

examiner “also asks whether the patent claims are obvi-

ous over the application claims. If not, the application

claims later may be allowed.” Id.

The two-way test, which is “a narrow exception to the

general rule of the one-way test,” arose out of the concern

to:

prevent rejections for obviousness-type double pa-

tenting when the applicants filed first for a basic

invention and later for an improvement, but,

through no fault of the applicants, the PTO decid-

ed the applications in the reverse order of filing,

rejecting the basic application although it would

have been allowed if the applications had been de-

cided in the order of their filing.

Id. We have explained that the two-way test is appropri-

ate only in the “unusual circumstance” where “the PTO is

solely responsible for the delay in causing the second-filed

application to issue prior to the first.” Id. at 1437 (em-

phasis added). Whether a one-way or two-way analysis

applies is a question of law that we review without defer-

ence. In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371,

1375 (Fed. Cir. 2008) (citation omitted).

On appeal, Hubbell argues that he is entitled to a

two-way obviousness analysis because: (1) the claims in

the ’509 application and the claims in the ’685 patent

could not have been filed together; and (2) “on a balance,

16 IN RE HUBBELL

the PTO was responsible for the claims in the ’685 patent

issuing before the present claims.” Appellants’ Br. 26. In

response, the Director argues that a two-way analysis is

not applicable because Hubbell cannot establish that the

PTO is solely responsible for any delays associated with

the claims on appeal. We again agree with the Board.

First, during the hearing before the Board, counsel

specifically conceded that Hubbell was partially responsi-

ble for the delay that caused the ’685 patent to issue

before the application claims. J.A. 313, ll. 11-12 (MS.

MONHEIT: “So the PTO shares responsibility. I’m not

saying that we’re blameless. I’m just saying that there is

shared responsibility.”). 5 Counsel also conceded that

Hubbell could have presented the claims at issue on

appeal in December 2001, but failed to do so until August

2003. See J.A. 312, ll. 19-24 (“JUDGE FREDMAN: “This

isn’t a situation where the PTO prevented you from

presenting these claims way back in 1998 or whatever it

would’ve been when you had the first case.” MS.

MONHEIT: “The earliest point that we could have pre-

sented [the claims on appeal] is when we filed that CIP,

which is in 2001.”). This admission further supports the

conclusion that the PTO was not solely responsible for the

delay. See Eli Lilly, 251 F.3d at 969 n. 7 (recognizing that

an admission “that the claim[s] could have been presented

earlier . . . indicates that the delay was not solely caused

by the PTO”).

Finally, the record reveals that, in June 2003, the ex-

aminer allowed claims very similar to those at issue on

appeal. Rather than permitting those claims to issue,

5 Likewise, in his briefing on appeal, Hubbell admit-

ted shared responsibility. See Appellants’ Br. 26 (stating

that, “on a balance, the PTO was responsible for the

claims in the ’685 patent issuing before the present

claims”) (emphasis added)).

IN RE HUBBELL 17

Hubbell failed to pay the issue fee, let the ’918 application

claims go abandoned, and filed the ’509 application in

August 2003. 6 These prosecution choices resulted in the

foreseeable consequence that the ’685 patent issued before

the application claims on appeal. Given these circum-

stances, and because it is undisputed that the PTO was

not solely responsible for the delay, Hubbell is not entitled

to a two-way obviousness analysis. 7

6 During oral argument, counsel for Hubbell ex-

plained that CalTech – the assignee of the ’918 applica-

tion – intentionally let the claims go abandoned. See Oral

Argument at 26:30, available at

http://www.cafc.uscourts.gov/oral-argument-

recordings/2011-1547/all (“The claims required recombi-

nantly producing the fusion protein . . . when the claims

were granted CalTech looked at those claims and said

‘you know what, we disclosed that it doesn’t have to be

limited to recombinantly producing it. Let’s refile it; we’ll

get it allowed quickly.’”).

7 Hubbell also argues that this court should extend

its reasoning from In re Braat, 937 F.2d 589 (Fed. Cir.

1991), and should apply the two-way test as an equitable

measure. In Braat, we recognized that “basic and im-

provement patents should not be penalized by the rate of

progress of the applications through the PTO, a matter

over which the applicant does not have complete control.”

Id. at 593. In that case, we noted that: (1) the common

assignee could not have filed the rejected application

claims with the patent claims because they had different

inventive entities; and (2) it was not the assignee’s fault

that the patent claims issued first. Id. at 594. As the

Director points out, Braat “stands for the general proposi-

tion that the two-way test applies when a later-filed

improvement application issues before an earlier-filed

basic application due entirely to the USPTO.” Appellee’s

Br. 21 (citing Berg, 140 F.3d at 1432-34; Braat, 937 F.2d

18 IN RE HUBBELL

CONCLUSION

For the foregoing reasons, and because we find that

Hubbell’s remaining arguments are without merit, we

conclude that the Board properly affirmed the examiner’s

decision rejecting the pending application claims based on

obviousness-type double patenting in view of the ’685

patent. Accordingly, the Board’s decision is affirmed.

AFFIRMED

at 593-94). In Berg, moreover, we noted that, “even in a

case where the inventions could not have been filed in a

single application, if the applicant thereafter controlled

the respective rates of prosecution to cause the species or

improvement claims to issue prior to the genus or basic

invention claims . . . such applicant seems not to be enti-

tled to the two-way test under settled case law.” 140 F.3d

at 1434 n.6 (citation omitted). Given that Hubbell has

conceded partial responsibility for the delay, his reliance

on Braat is misplaced.

United States Court of Appeals

for the Federal Circuit

______________________

IN RE JEFFREY HUBBELL, JASON SCHENSE,

ANDREAS ZISCH, AND HEIKE HALL

______________________

2011-1547

(Serial No. 10/650,509)

______________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

______________________

NEWMAN, Circuit Judge, dissenting.

In accordance with the law of double patenting, dou-

ble patenting does not apply when the application and

patent are of separate ownership and have separate

inventive entities. In such situation the appropriate

examination path is on the merits of the invention, or

through the interference or derivation procedures, or

other standard protocol as may apply in the particular

situation. The technology here appears to involve generic

and species inventions; such separate developments are

not unusual, and there exists extensive precedent to guide

patentability. This court need not create a new protocol

wherein the contributions of distinct entities and separate

ownership are rejected for “double patenting” instead of

examined under the established rules.

The court today not only finds “double patenting”

when there is neither common inventorship nor common

ownership, but having so found withholds the standard

2 IN RE HUBBELL

remedy of the terminal disclaimer, and simply denies the

application. This novel ruling is contrary to statute and

precedent, with no policy justification for changing the

law. I respectfully dissent.

DISCUSSION

In the entire body of precedent relating to rejection on

the ground of double patenting, the rejected patents or

applications were of common inventorship or common

ownership. This is illustrated in early examples such as

Miller v. Eagle Manufacturing, 151 U.S. 186 (1894),

where the inventor had divided his patent application into

two separate applications that issued as patents, and the

Court held that the second patent could only be justified if

the later-issued claim “is clearly distinct from and inde-

pendent of, one previously patented.” Id. at 199–200.

Earlier, in James v. Campbell, 104 U.S. (14 Otto.) 356,

382 (1882), the Court stated that “[i]t is hardly necessary

to remark that the patentee could not include in a subse-

quent patent any invention embraced or described in a

prior one granted to himself, any more than he could an

invention embraced or described in a prior patent granted

to a third person.”

The Court of Customs and Patent Appeals applied

this precedent in cases such as In re Barge, 96 F.2d 314,

316 (CCPA 1938), where the court explained that “an

applicant . . . is not entitled to two patents if his disclo-

sure in the later application is not inventive over that for

which he has already received a patent.” The concept was

extended to commonly-owned patents, as in In re

Borcherdt, 197 F.2d 550, 551 (CCPA 1952) (“two patents

may not issue for different forms or species of the same

invention when they are non-inventively different” and

“the same principle applies to patents of different inven-

tors granted to a common assignee”); see also In re New-

ton, 414 F.2d 1400 (CCPA 1969); In re Bowers, 359 F.2d

886 (CCPA 1966).

IN RE HUBBELL 3

The CCPA referred to the policy of avoiding extension

of the term of exclusivity, and also recognized reasons

such as “possible harassment by multiple assignees,

inconvenience to the Patent Office, and the possibility

that one might avoid the effect of file wrapper estoppel.”

In re Robeson, 331 F.2d 610, 615 (CCPA 1964). Discuss-

ing the possibility of harassment, on which my colleagues

on this panel place emphasis, the court stated:

[Issuance of multiple patents] is a very common

situation existing with respect to genus and spe-

cies, dominant and subservient, and ‘overlapping’

patents, whenever there are unobvious differ-

ences, all granted in strict accordance with law

and presumed valid. Yet we do not see the courts

bogged down with harassment suits. In those ra-

re instances where there is a situation which a

court can be persuaded amounts to harassment, it

has means for dealing with it by inflicting attor-

ney’s fees. This can be a powerful deterrent.

In re Jentoft, 392 F.2d 633, 641 (CCPA 1968); see In re

Eckel, 393 F.2d 848, 857 (CCPA 1968).

The CCPA elaborated on the definition of inventive

entity as a predicate for double patenting. In In re Land

and Rogers, 368 F.2d 866, 879 (CCPA 1966) the court

stated:

The question here is not merely whether A or B,

individually, is or is not “another” to A & B jointly

on a theory of “different legal entities.” Of course

they are different “entities” in the sense that an

invention made jointly by A & B cannot be the

sole invention of A or B and vice versa, and cer-

tain legal consequences flow from such fact, such

as who must apply for patent.

4 IN RE HUBBELL

The Manual of Patenting Examining Procedure has also

defined “inventive entity” for purposes of the law of dou-

ble patenting:

The inventive entity is the sole inventor or the

joint inventors listed on a patent or patent appli-

cation. A sole inventor in one application and

joint inventors in another application cannot con-

stitute a single or the same entity, even if the sole

inventor is one of the joint inventors. Likewise,

two sets of joint inventors do not constitute a sin-

gle inventive entity if any individual inventor is

included in one set who is not also included in the

other set.

MPEP §804 (4th ed. 1979). The Federal Circuit observed

in In re Kaplan, 789 F.2d 1574 (Fed. Cir. 1986), that: “It is

a given, of course, that a sole inventor and joint inventors

including the sole inventor are separate ‘legal entities,’ a

legal proposition from which certain legal consequences

flow.”

The law of double patenting evolved in various factual

situations, but never departed from the requirement of

either common inventorship or common ownership, and

never departed from the available remedy of terminal

disclaimer for obviousness-type double patenting. This

remedy draws on the 1952 codification that any patentee

or applicant may “disclaim or dedicate to the public the

entire term, or any terminal part of the term, of the

patent granted or to be granted,” 35 U.S.C. §253. As

explained by P.J. Federico, Examiner-in-Chief of the

United States Patent Office and a draftsman of the 1952

Act:

No specific reason for this provision appears in

the printed record, but its proponents contemplat-

ed that it might be effective in some instances, in

combating a defense of double patenting, to per-

mit the patentee to cut back the term of a later is-

IN RE HUBBELL 5

sued patent so as to expire at the same time as

the earlier issued patent and thus eliminate any

charge of extension of monopoly.

35 U.S.C.A. 1, 49 (1954), reprinted at 75 J. Pat. & Trade-

mark Off. Soc’y 161 (1993).

In In re Griswold, 365 F.2d 834 (CCPA 1966), the

CCPA reviewed a terminal disclaimer that included a

provision that the second patent would “be enforceable

only for and during such period that the legal title to said

patent and to such right to recover shall be the same

respectively as” the first patent. Id. at 840 n.5. The

CCPA remarked that such a provision would eliminate

any possibility of harassment if the two patents later

came into separate hands, and the Patent Office duly

amended its Rule 321 to require that terminal disclaimers

contain such a “non-alienation” agreement. 37 C.F.R.

§1.321(b).

The CCPA upheld this authority to require non-

alienation in In re Van Ornum, 686 F.2d 937, 948 (CCPA

1982), where the inventors of the patent and the applica-

tion had already assigned rights to different companies;

the court held that there was double patenting, for there

was a common inventive entity, but that the remedy of

terminal disclaimer was not available because the patent-

ee had purposely divided ownership in the patent and

application and could not comply with the non-alienation

requirement. My colleagues state that Van Ornum sup-

ports their application of double patenting in this case; if

anything, Van Ornum supports the contrary. In In re

Longi, 759 F.2d 887, 895 (Fed. Cir. 1985), this court

referred to the “important legislative history” of the

enactment in 1984 of §103(c)(1) relating to commonly

owned applications of different inventive entities, where-

by the applications are subject to terminal disclaimer in

order to avoid unwarranted extension of the term of

patent protection:

6 IN RE HUBBELL

The Committee expects that the Patent and

Trademark Office will reinstitute in appropriate

circumstances the practice of rejecting claims in

commonly owned applications of different in-

ventive entities on the ground of double patenting.

This will be necessary in order to prevent an or-

ganization from obtaining two or more patents

with different expiration dates covering nearly

identical subject matter.

Patent Law Amendment Act of 1984, 130 Cong. Rec.

H10,527 (1984). The legislative record explained that

when the ownership is the same, whether or not the

inventorship is different, rejection on the ground of double

patenting can be overcome “by disclaiming the terminal

portion of the term of the later patent, thereby eliminat-

ing the problem of extending patent life.” Id. The panel

majority misapplies §103(c)(1), for the statute is directed

to situations of common ownership; it does not provide

that when there is not common ownership there can be no

patent.

Until today, there has been no departure from the

principles of the law of double patenting. In the case at

bar, neither a common inventive entity not common

ownership is present. The application in suit is assigned

to the California Institute of Technology; and is for a

protein or peptide with a transglutaminase substrate and

a polypeptide growth factor. It has four inventors that

include Hubbell and Schense; the provisional application's

filing date is April 3, 1997. In 1998 Hubbell and Schense

joined the faculty at the Eidgenossiche Technische

Hochschule Zurich (ETHZ) and the Universitat Zurich,

and a parent application directed to a species within the

genus was filed on August 27, 1998 and assigned to

ETHZ, with three inventors that include Hubbell and

Schense.

IN RE HUBBELL 7

The panel majority does not dispute that these are dif-

ferent inventive entities and that there is not common

ownership. However, the court rules that obviousness-

type double patenting applies. If there indeed is obvious-

ness-type double patenting, then a terminal disclaimer is

necessarily available. However, the court rules that a

terminal disclaimer is not available because there is not

common ownership. Yet if there is not common ownership

or common inventorship, there cannot be double patent-

ing. On this circularity, the court denies the CalTech

application on the ground of double patenting.

The panel majority miscites In re Fallaux, 564 F.3d

1313 (Fed. Cir. 2009), for that ruling disclaimed the

holding for which its authority is now asserted. The

Fallaux court referred to a provision in the MPEP and

stated that “This opinion should not be read to decide or

endorse the PTO's view on this issue.” Id. at 1316 n.1.

My colleagues now cite this footnote as authority for the

holding it declined to make.

The CalTech application and the ETHZ patent were

never commonly owned, unlike those of Fallaux and Van

Ornum, where ownership was divided during pendency.

Genus and species patents are not unusual; there is no

suggestion of any attempt to “game” the system. 1 From

the court's flawed ruling on incorrect law, I respectfully

dissent.

1 CalTech has asked for equitable relief in the

form of authorization to file a terminal disclaimer; I would

not foreclose such a possibility.