Koninklijke Philips Electronics N.V. et al v. Zoll Medical Corporation
Filing
597
Judge Nathaniel M. Gorton: ORDER entered. MEMORANDUM AND ORDER: "For the foregoing reasons, the Court concludes that it is inappropriate to bar claims of infringement of United States Patent Nos. 5,749,905, 6,047,212 and 5,836,978 based upon the doctrine of obviousness-type double patenting and therefore such claims are not barred.So ordered."(Moore, Kellyann)
United States District Court
District of Massachusetts
KONINKLIJKE PHILIPS N.V. and
PHILIPS ELECTRONICS NORTH
AMERICA CORPORATION,
Plaintiffs/
Counter-Defendants,
v.
ZOLL MEDICAL CORPORATION,
Defendant/
Counter-Claimant.
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Civil Action No.
10-11041-NMG
MEMORANDUM & ORDER
GORTON, J.
This Memorandum and Order addresses a post-trial memorandum
filed by defendant/counter-claimant ZOLL Medical Corporation
(“ZOLL”) asserting a double patenting defense against the patent
infringement claims of plaintiffs/counter-defendants Koninklijke
Philips N.V. and Philips Electronics North America Corporation
(collectively, “Philips”).
Specifically, ZOLL maintains that
the asserted claims of United States Patent Nos. 5,749,905 (“the
‘905 patent”), 6,047,212 (“the ‘212 patent”) and 5,836,978 (“the
‘978 patent”) are invalid for double patenting based upon
similar claims asserted in United States Patent Nos. 5,749,904
-1-
(“the ‘904 patent”), 5,593,427 (“the ‘427 patent”), 5,607,454
(“the ‘454 patent”) and 5,803,927 (“the ‘927 patent”).1
I.
Legal Standard
Obviousness-type double patenting is a judicially-created
doctrine that prohibits parties from extending their property
rights beyond the end of a patent term. Eli Lilly & Co. v. Barr
Labs, Inc., 251 F.3d 955, 967-68 (Fed. Cir. 2001).
The defense
applies when one or more claims of an earlier patent either
anticipate or render obvious one or more claims in a later
patent and the patents are commonly owned. Takeda Pharm. Co. v.
Doll, 561 F.3d 1372, 1375 (Fed. Cir. 2009).
The doctrine is
intended to prevent 1) the “unjustified timewise extension of
the right to exclude granted by a patent” and 2) different
assignees from filing multiple infringement suits based upon
what is “essentially the same patented invention.” In re
Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013).
Whether a patent claim is invalid under the doctrine of
obviousness-type double patenting is a question of law. Id.
As
with all issues of patent invalidity, an accused infringer must
1
The Court declines to make separate findings of fact and
conclusions of law under Fed. R. Civ. P. 52(a)(1) because the
issue of double-patenting was not tried to the Court without a
jury or submitted to the jury for an advisory verdict. Instead,
the Court allowed the admission of the ‘427 patent (Trial Ex.
1648), the ‘904 patent (Trial Ex. 1659) and the ‘927 patent
(Trial Ex. 1664) into the trial record because it had been
advised that ZOLL’s expert, Dr. Kroll, would testify about
double patenting. Dr. Kroll provided no such testimony.
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prove obviousness-type double patenting by clear and convincing
evidence. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569,
1580 (Fed. Cir. 1991).
The Court applies a two-step process when deciding if a
patent claim is void for obviousness-type double patenting. Eli
Lilly & Co., 251 F.3d at 968. First, it construes the claims in
the earlier and later patents to determine whether there are any
differences between them. Id.
It then decides whether any
perceived difference renders the claims “patentably distinct.”
Id.
If a later claim is anticipated by or obvious over an
earlier claim, it is not patentably distinct and is therefore
invalid. Id.
II.
Application
Philips objects to the substance of ZOLL’s double-patenting
defense as well as to the process by which it was raised.
Putting Philips’s procedural objections aside, the Court agrees
with Philips that a double patenting defense cannot be applied
to invalidate the ‘905, ‘978 and ‘212 patents because the ‘905
and ‘978 patents both expired on the same date as the ‘904 and
‘427 patents and the ‘212 patent expired on the same date as the
‘927 patent and before the ‘454 patent.
A.
Relevant Expiration Dates
Each of the ‘905, ‘978, ‘212, ‘904, ‘427 and ‘927 patents
is a continuation of U.S. Patent Application No. 08/103,873
-3-
filed on August 6, 1993 but is based on an application filed in
1996 or later.
The ‘905 patent issued on May 12, 1998 from an
application filed August 2, 1996.
The ‘978 patent issued on
November 17, 1998 from an application filed August 12, 1997.
The ‘212 patent issued on April 4, 2000 from an application
filed October 8, 1997.
The ‘904 patent issued on May 12, 1998
from an application filed on February 14, 1996.
The ‘427 patent
issued on January 14, 1997 from an application filed on February
14, 1996.
The ‘927 patent issued on September 8, 1998 from an
application filed on February 19, 1997.
Because each of the subject patents issued from
applications that were filed after the Uruguay Rounds Agreement
Act, Pub. L. 103-465, 108 Stat. 4809 (1994) changed the rules
for the expiration of patent terms, see 35 U.S.C. § 154(a), they
were entitled to a 20-year term of patent exclusivity beginning
on the date of the earliest-filed application to which they
claim priority.
Because they all claim priority to the August
6, 1993 application, they share an expiration date of August 6,
2013.
The ‘454 patent has a different expiration date even though
it also claims priority to the application filed on August 6,
1993.
The ‘454 patent issued on March 4, 1997 from an
application filed on April 14, 1994.
Because that application
predated the amendment to 35 U.S.C. § 154, the inventor was
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entitled to claim the longer of the terms extending 17 years
from the date on which the patent issued or 20 years from the
date of the earliest filed application to which the patent
claims priority.
In this case, the longer term was the 17-year
term that began on March 4, 1997 and ended on March 4, 2014 as
opposed to the 20-year term that began on August 6, 1993 and
ended on August 6, 2013.
B.
Analysis
Because the ‘904, ‘427 and ‘927 patents all expired on the
same date as the patents they allegedly invalidate, they do not
support a double patenting defense as to the ‘905, ‘978 and ‘212
patents.
The Federal Circuit has recently explained that
expiration dates, not issuance dates, are determinative in
assessing a double patenting defense. Gilead Sciences, Inc. v.
Natco Pharma Ltd., No 2013-1418, 2014 WL 1584450, at *5-6 (Fed.
Cir. Apr. 22, 2014).
Here, the ‘904, ‘427 and ‘927 patents
expired on the same date as the asserted ‘905, ‘978 and ‘212
patents.
As a result, any overlap between the subject matter
did not result in an “unjustified timewise extension of the
right to exclude granted by” the ‘905, ‘978 and ‘212 patents.
Hubbell, 709 F.3d at 1145.
While the ‘454 patent expired after the other patents in
this family, the same result obtains.
The patent that it
allegedly invalidates, the ‘212 patent, expired before the ‘454
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patent and therefore, logically, the ‘212 patent could not
unfairly extend the term of the ‘454 patent. See id.; Gilead,
2014 WL 1584450, at *6.
Furthermore, while it is possible that a double-patenting
defense could still apply where there were other adjustments or
extensions to the subject patent term or where multiple cases
were filed by different assignees, see In re Fallaux, 564 F.3d
1313, 1318-19 (Fed. Cir. 2009), ZOLL has presented no evidence,
much less clear and convincing evidence, to prove that such
conditions exist in this case.
ORDER
For the foregoing reasons, the Court concludes that it is
inappropriate to bar claims of infringement of United States
Patent Nos. 5,749,905, 6,047,212 and 5,836,978 based upon the
doctrine of obviousness-type double patenting and therefore such
claims are not barred.
So ordered.
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated June 20, 2014
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