In a previous post to this blog, I discussed the case of Sun Pharmaceuticals v. Eli Lilly, in which a panel of the Federal Circuit dramatically expanded the scopeof the doctrine of obviousness-type double patenting. I also worked with the Biotechnology Industry Organization (BIO) on an amicus brief supporting Lilly's petition for rehearing en banc, available here. The Federal Circuit denied that petition, over a vigorous dissent by four judges (Newman, Rader, Lourie, and Linn), who argued that "[u]ntil recently the law of double patenting was clear, but it has become distorted by divergent statements, leading to this flawed ruling."
Notably, one of the dissenting judges (Rader) was the author of the Geneva opinion, which created the precedential authority upon which the Sun panel justified its decision. But as noted by the four dissenting judges, "extending Geneva to cover the facts of [Sun] does not further the policy of obviousness-type double patenting."
On Friday, Eli Lilly filed a petition for certiorari asking the Supreme Court to review the Federal Circuit's decision in Sun. The question is presented as "[w]hether the Federal Circuit improperly transformed the doctrine of "double patenting," in conflict with a "vast body of precedent" cited by four dissenting judges, by creating a new bright-line rule that invalidates a subsequent patent on a nonobvious, newly discovered use of the basic invention solely because it was disclosed, but not claimed, in the final text of the earlier basic patent."
Lilly's petition cites extensively to the opinion of the four dissenting Federal Circuit judges, including a statement that the Sun decision "violates a vast body of precedent," and a charge that the majorities refusal to rehear the case en banc to resolve the Court’s conflicting precedent in this area constitutes "an indictment of the ability of [that] court to provide stable law in the areas entrusted to [it]."