BOEHRINGER INGELHEIM INTERNATIONAL GMBH and BOEHRINGER INGELHEIM PHARMACEUTICALS, INC., Plaintiffs-Appellants, v. BARR LABORATORIES, INC. and BARR PHARMACEUTICALS, INC., Defendants, and MYLAN PHARMACEUTICALS, INC., Defendant-Appellee., 592 F.3d 1340

Summary

The patentee marketed pramipexole under the brand name Mirapex. The patent was a divisional of a patent which had expired. Near the end of trial, the patentee filed a terminal disclaimer, seeking to overcome obviousness-type double patenting. The district court concluded, correctly, that the terminal disclaimer was ineffective to overcome the obviousness-type double patenting rejection, because the disclaimer was filed after the earlier patent had expired. The district court also rejected its argument that the safe-harbor provision of § 121 precluded the use of the earlier patent as an invalidating reference. At issue was whether § 121 could apply to a divisional of a divisional of the application in which a restriction requirement was entered; and (2) whether the "as a result of" requirement of § 121 applied to the later patent and was satisfied. A majority of the appellate panel ruled that the safe harbor provision of § 121 applied to a divisional of a divisional application, and the...