The U.S. Court of Appeals for the Federal Circuit has denied petitions by both parties to for a rehearing of its March 2008 decision that invalidated one of three asserted Pfizer patents covering Celebrex® for double patenting, while finding that the other two other patents covering the blockbuster anti-inflammatory are valid, enforceable and infringed by the generic manufacturer's product. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., Case No. 07-1271 (Fed. Cir., March 3, 2008) (Dyk J.)
The opinion by Judge Dyk ruled that one of three asserted Pfizer patents was invalid for double patenting (see IP Update, Vol. 3, No. 11). The third sentence of patent code section 121 provides a safe harbor from double patenting rejections for patents that issue on divisional applications filed as a result of U.S. Patent and Trademark Office (USPTO) restriction requirements. After reviewing the legislative history, the Federal Circuit decided the protection of the sentence does not extend to continuation-in-part (CIP) applications. The method patent issued from a CIP application and was invalid because it was not "patentably distinct" from a Pfizer patent for the composition. Both Pfizer and Teva had asked the U.S. Court of Appeals for the Federal Circuit for a rehearing on its split ruling. The two infringed patents do not expire until May 2014.
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