In re Basell Poliolefine Italia (CAFC 2007-1450)

On June 7, 2002, the PTO initiated a Director-ordered reexamination. The reexamination was for all claims based on double patenting in view of two expired patents issued to Natta, viz., U.S. Patents 3,256,235 ("the '235 patent") and 3,403,139 ("the '139 patent"). During the course of reexamination, the Examiner added double patenting rejections based on two other expired patents issued to Natta, viz., U.S. Patents 3,317,496 ("the '496 patent") and 3,582,987 ("the '987 patent").

Obviousness-type double patenting may be overcome by a terminal disclaimer, which wasn't filed in this case.

Claims of the '687 patent are unpatentable based on obviousness-type double patenting in view of the '987 patent. "The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise extension of [a] patent for the same invention or an obvious modification thereof." In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997). The judicially created doctrine of obviousness-type double patenting "prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent." Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001). In determining double patenting, a one-way test is normally applied, in which "the examiner asks whether the application claims are obvious over the patent claims." In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998). In unusual circumstances, where an applicant has been unable to issue its first-filed application, a two-way test may apply, in which "the examiner also asks whether the patent claims are obvious over the application claims." Id.

The "critical inquiry" was whether the '687 claims were not patentably distinct from the '987 patent, which was found to be so, and affirmed on up the line.

Judge Newman took a sharp blade to Judge Lourie's opinion, who was joined by Judge Linn.

The patent on appeal is directed to the production of crystalline copolymers of alpha-olefins having four or more carbon atoms, using a catalyst obtained by reacting an aluminum alkyl with a titanium halide; the inventor is Natta et al. (the "Natta '687 patent"). The initial application was filed in 1958, flowing from discoveries that started with the polymerization of ethylene and that have produced new materials that continue to revolutionize the packaging and several other industries. The scientific achievements reflected in these discoveries won a Nobel Prize in 1963 for Dr. Giulio Natta and Dr. Karl Ziegler.

I write in dissent, first because the reexamination here conducted was in violation of the reexamination law as it then existed. Such violation should not be condoned, for the PTO is as bound by the law as are those who practice before it.

Newman noted the dubiousness of the Director ordering the reexam. From there, criticized every aspect of this case.

Reexamination before 35 U.S.C. §303 was amended effective November 2, 2002, was available only on certain grounds not considered during the initial examination. The purpose was to protect patentees from the harassment of too-facile reexamination, lest the abuses outweigh the benefits.1 Reexamination of the Natta '687 patent was not requested by any interested person, but was ordered by the Director of the PTO for the stated reason: "The failure of the Office to consider the entire patent family for potential double patenting issues has created an extraordinary situation for which a Commissioner ordered reexamination is an appropriate remedy." Director Initiated Order for Reexamination, at 2 (Jun. 7, 2002). However, the issue of double patenting had been considered during the initial examination; and the examiner had found, as stated in the Reasons for Allowance, that: "The statutory double-patenting rejection has been obviated by the amendments set forth in the latest response . . . The obviousness-type double patenting rejection is withdrawn as per MPEP § 804(I)(B)." Reason for Allowance, Application/Control No. 07/883,912, at 3 (Sept. 27, 2001).

The PTO apparently recognized that there was a problem with its initiation of this reexamination, for the Board stated that if this court were to find that the reexamination had been improperly initiated, on remand the PTO would simply institute another reexamination under the amended statute. Ex parte Basell, Appeal No. 2004-1390, Reexamination Control No. 90/006,297, at 122 n.37 (Aug. 19, 2004).

The PTO's brief on appeal does not attempt to justify the reexamination on double patenting grounds, but instead argues only an alternative ground related to entitlement to the initial filing date and the effect of an intervening reference. This ground was also considered during the initial examination of the Natta '687 patent, with the examiner's Reasons for Allowance stating: "The prior art rejections are withdrawn because the right to benefit of the filing date of the Italian ['109] priority application has been established, and thus the Vandenberg and Anderson patents are antedated." In sum, no valid basis has been provided for this reexamination.

My colleagues now review only the double patenting rejection, ignore the underlying impropriety, and chastise the patentee for delays for which it was not responsible.

The issue of delay

The PTO criticizes the long period from initial filing to issuance of the Natta '687 patent. It is indeed extraordinarily long. However, the reexamination examiner acknowledged that there were "PTO delays due to multiple interferences which occurred from the 1950's up to 1984 or 1985," while also stating that the applicant "caused a substantial number of delays from 1985 to 2000." Examiner's Answer, Application Number: 90/006,297, at 30 (Jan. 13, 2004). The latter period included an appeal to this court, during which the PTO moved for remand in order to conduct additional examination. The record shows no violation by the applicant of the PTO's rules and procedures, or any significant departure from standard practices, in Natta's participating in time-consuming procedures.

The delays due to patent interferences are notorious, and here there were three, involving multiple parties and multiple countries. Interference delays generally flow from not only the complexity of the subject matter and requisite proofs, but also the due process that PTO procedures assure in these complex inter partes proceedings, including the rights of appeal and the authorized judicial proceedings. It may well be that the PTO has been unfairly criticized for the lengthy pendency illustrated by this patent; however, it is equally unfair to chastise this patentee, when most of the delay was agreed by the PTO to be due to its procedures.

Whatever the reasons for the prolonged pendency, delay is not a ground of double patenting.

The double patenting issue

The PTO had consistently found that the claims of the Natta '687 patent are patentably distinct from the claims of the '987 patent. In both the examination and the reexamination, the examiners found that the classes of copolymers and catalysts in the '687 claims were patentably distinct from those claimed in the '987 patent. The PTO agreed that the subject matter claimed in the Natta '687 patent is not an obvious variant of the '987 claims.

In sum, in view of the recognition that the process in the '687 claims is patentably distinct from the '987 claims, double patenting can not lie. See Application of Sarett, 327 F.2d 1005, 1016 (C.C.P.A. 1964) (reversing rejections for obviousness-type double patenting because generic and specific claims may nonetheless be patently distinct); see generally In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (explaining that a disclosure of a chemical genus does not automatically render obvious any species within the genus).