IP Law Daily, PATENT—D. Mass.: Obviousness-type double patenting did not bar infringement claims, (Jun 23, 2014)

By Jody Coultas, J.D.

The federal district court in Boston held that it was inappropriate to bar claims of infringement claims brought by Koninklijke Philips N.V. against ZOLL Medical Corporation based upon the doctrine of obviousness-type double patenting (Koninklijke Philips N.V. v. ZOLL Medical Corporation, June 20, 2014, Gorton, N.).

ZOLL argued that United States Patent Nos. 5,749,905 (“the ‘905 patent”), 6,047,212 (“the ‘212 patent”) and 5,836,978 (“the ‘978 patent”) were invalid for double patenting based upon similar claims asserted in United States Patent Nos. 5,749,904 (“the ‘904 patent”), 5,593,427 (“the ‘427 patent”), 5,607,454 (“the ‘454 patent”) and 5,803,927 (“the ‘927 patent”).

Obviousness-type double patenting 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.

Because the patents asserted by ZOLL all expired on the same date as the patents they allegedly invalidated, the court held that the infringement claims were not barred by the double patenting defense. Any overlap between the subject matter of the patents did not result in an “unjustified timewise extension of the right to exclude granted by” the ‘905, ‘978 and ‘212 patents. Although the ‘454 patent expired after the other patents, the result was the same because the patent that it allegedly invalidates, the ‘212 patent, expired before the ‘454 patent and could not unfairly extend the term of the ‘454 patent.

The case is No. 10-11041-NMG.

Attorneys: David K. Mroz (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for Koninklijke Philips, NV, and Philips Electronics North America Corp. Betty H. Chen (Fish & Richardson, PC), and Christopher C. Campbell (Cooley, LLP) for Zoll Medical Corp.

Companies: Koninklijke Philips N.V.; Zoll Medical Corp.

Cases: Patent MassachusettsNews