In In Re Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall, Appeal No. 2011-1547 (Fed. Cir. March 7, 2013) (a copy can be found at the end of this post), the Federal Circuit affirmed a Board of Patent Appeals and Interferences (BPAI) decision that claims of U.S. Patent Application No. 10/650,509 (the ‘509 application”) were obvious under the doctrine of obviousness-type double patenting.

The invention disclosed in the ‘509 application was based on research by Jeffrey Hubbell and Jason Schense while they were employed at California Institute of Technology (“CalTech”).  The ‘509 application was assigned to CalTech.  Hubbell left CalTech and joined the faculty of Eidgenossische Technische Hochschule Zurich (“ETHZ”) five years before the ‘509 application was filed.  An application that later issued as patent number 7,601,685 (“the ‘685 patent”) was based on research by Hubbell and Schense at ETHZ.  The ‘695 patent was assigned to ETHZ and Universitat Zurich.  The ‘509 application was rejected by the Examiner for obviousness-type double patenting over the ‘685 patent and other patents.  (A copy of the ‘509 application as published and the ‘685 patent can be found at the end of this post).  The BPAI affirmed the rejection, rejecting Hubbell’s argument that common ownership is required for obviousness-type double patenting.

On appeal, Hubbell argued that obviousness-type double patenting should never be applied in the absence of common ownership of the applications at issue.  The court disagreed, and further held that a terminal disclaimer could not be filed if the conflicting patents were not commonly owned.  The court cited In re Fallaux, 564 F.3d 1313, 1315 (Fed. Cir. 2009) for the reasoning that one of the goals of obviousness-type double patenting rejections was to prevent harassment of an alleged infringer by multiple assignees asserting essentially the same patented invention, and that this goal would be frustrated if a terminal disclaimer were permitted to be filed.

Hubbell attempted to distinguish Fallaux by arguing that in Fallaux, the patents were commonly owned at one point, and that the owner was the party responsible for causing the patents to not be  commonly owned.  In contrast, according to Hubbell, Hubbell himself controlled the assignment by moving from CalTech to ETHZ.  The court summarized Hubbell’s argument as being an argument for the proposition that, if the owner did not control ownership of the patents and did not cause the divided assignment, then obviousness-type double patenting should not apply.  The court was not persuaded by Hubbell’s reasoning, and the court found that the fact that Hubbell controlled the ownership of the patents did not relieve concerns about harassment of infringers by multiple assignees.

The court further held that Hubbell was not authorized to file a terminal disclaimer because the ‘509 application and the ‘685 patent were not commonly owned.  Further, the Cooperative Research and Technology Enhancement Act of 2004 did not give Hubbell the right to file  a terminal disclaimer at least because there was no joint research agreement between CalTech and ETHZ at the time the invention was made.

In her dissent, Judge Newman found that there was not common ownership nor were there common inventive entities, and that therefore there could be no obviousness-type double patenting.  The court noted that Judge Newman was citing to an outdated version of the MPEP and the court stated that it was not persuaded by the dissent’s arguments