## United States Court of Appeals for the Federal Circuit

2008-1131

TAKEDA PHARMACEUTICAL CO., LTD., Plaintiff-Appellee,

v.

John J. Doll, ACTING UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY and ACTING DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellant.

Harold C. Wegner , Foley & Lardner LLP., of Washin gton, DC, argued for plaintiffappellee. With him on the brief were Stephen B. Maebius , Leon Radomsky , and C. Edward Polk, Jr

. Sarang Vijay Damle , Attorney, Commercial Litigatio n Branch, Civil Division, United States Department of Justic e, of Washington, DC, argued for defendant-appellant. With him on the brief was Scott R. McIntosh , Attorney. Of counsel on the brief was William G. Jenks , Associate Solicitor, Office of the Solic itor, United States Patent and Trademark Office, of Arlington, Virginia. Of counsel were Raymond T. Chen , Solicitor, and Shannon M. Hansen , Associate Solicitor. Appealed from: United St ates District Court for the District of Columbia Senior Judge Thomas F. Hogan

## United States Court of Appeals for the Federal Circuit

2008-1131 TAKEDA PHARMACEUTICAL CO., LTD., Plaintiff-Appellee,

v. John J. Doll, ACTING UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY and ACTING DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellant.

Appeal from the United States District Court for the District of Columbia in case no. 06- CV-1640,Senior Judge Thomas F. Hogan.

__________________ _________ DECIDED: April 10, 2009

__________________ _________ Before RADER, SCHALL, and MOORE, Circuit Judges

. Opinion for the court filed by Circuit Judge , RADER. Opinion concurring-in-part and dissenting-in-part filed by Circuit Judge , SCHALL. The United States District Court for th e District of Columbia held that later developments in the art may inform the “p atentably distinct” determination for double patenting. Double pa tenting doctrines and case law permi t this court to agree in part, but only to the extent that the subs equent developments predate the secondary application that triggers a double patenting reje ction. Because genuine issues of fact cloud the date of availability of materially dist inct processes, as well as the viability of those processes, this court vacates and remands.I. Takeda Pharmaceutical Co., Ltd. (Takeda) filed a patent applic ation disclosing certain cephem compounds an d the process for making t hose compounds in Japan on December 19, 1974. Takeda file d later applications in the United Kingdom on June 9, 1975, and in the United States on December 19, 1975. Takeda developed these new cephem compounds through an ac ylation process, introduc ing a new acyl group (RC=O) to an amino group (-NR 3 ). Takeda obtained a number of patents claiming these cephem compounds through a series of continuations, continuations-in-part, and divisional applications, including the compound patents that issued as U.S. Patent No. 4, 098,888 (the ’888 product patent) (application filed Dec. 19, 1975) and its divisional , U.S. Patent No. 4,298,606 (the ’606 product patent) ( application filed Aug. 28, 1979). This court refers to the December 19, 1975 applicat ion as the “primary applicat ion.” Takeda filed these applications before June 8, 1995, making them subject to t he seventeen year patent term regime. See 35 U.S.C. § 154(c). In other words, the patent terms on these inventions began on their grant dat e, not on their filing date. On January 8, 1990, Takeda filed its seco ndary application co vering the process for making the cephem compounds claime d in the ’888 and ’606 product patents— sixteen years after the 1974 priority date, and more than fourteen years after the filing of the ’888 product patent applicati on. The process patent i ssued as U.S. Patent No. 5,583,216 (the ’216 process patent ) on December 10, 1996, claiming the sole process known and disclosed in the Japanese priority patent application. The ’216 process patent led to the double patenting issue in this appeal.

2008-1131 2In 1998, the United States Patent and Trademark Office (PTO) received two anonymous requests for reexamination of t he ’216 process patent. These requests asserted that the ’216 proc ess patent was invalid for “obviousness-type” double patenting in view of Takeda’s prior patents, as well as other prior art. During reexamination, Takeda relie d upon the declaration of Dr. Wuest disclosing an alternative process (displacement proce ss) for making the cephem compounds claimed in the ’216 patent. Not pers uaded by the Wuest declaration, the examiner rejected the ’216 process patent claims as patentably indistinct over t he ’606 product patent claims. Takeda appealed the rejection to the Board of Patent Appeals and Interferences (the Board). The Board dismissed Dr. Wuest’s declaration as “speculative” and upheld the examiner’s double patent ing rejection. Takeda challenged the Board’s decision in the District C ourt for the District of Columbia under 35 U.S. C. § 145. Before the dist rict court, Takeda presented new evidence in the form of a declaration of Dr. Duggan. In her declar ation, Dr. Duggan explained that the process disclosed in U.S. Patent Nos. 6,552,186 (the Gerlach patent, published on Sept. 12, 2002, issued Apr. 22, 2003) and 7,071,329 (the Monguzzi patent, published June 2, 2005, issued July 4, 2006) provides a viable alternative, noninfringing process for making the certai n cephem compounds claimed in the ’606 product patent. For purposes of cross-motions for summary judgment, the parties stipulated that “Method B” of the Duggan decl aration described a material ly distinct alternative process. Therefore, befor e the district court, the par ties disputed whether the

2008-1131 3alternative process—Method B, developed after the date of invention—could defeat the double patenting rejection.

The district court concluded that “subsequent developments in the art [are relevant to] determining whether alternative processes exist” when weighing patentable distinctions for double patenting. Takeda Pharm. Co. v. Dudas , 511 F. Supp. 2d 81, 91 (D.D.C. 2007). Relying on Dr. Duggan’s di sclosure of Method B (published in the Gerlach and Monguzi patents in 2002 and 2005, respectively) the district court found that the product and process are “patentably distinct” and overturned the double patenting rejection. Id. at 92. The district court t herefore granted Takeda’s motion for summary judgment that it was ent itled to a reexamination cert ificate, confirming its right to the ’216 patent. At the same time, t he court denied the PTO’s motion for summary judgment. The PTO timely filed a notice of appeal with this court.

II. This court reviews a grant of su mmary judgment wit hout deference. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp. , 149 F.3d 1309, 1315 (Fed. Cir. 1998). Summary judgment is appropriate if the record discloses no genuine issues of material fact. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247-48 (1986). A material fact is one “that might affect the outcome of the suit under the governing law”; an issue is genuine “if the evidence is such that a reasonable [factfinder] could return a verdict for the nonmoving party.” Id. at 248. This court reviews the Board’s factual findings for “substantial evidence.” Mazzari v. Rogan , 323 F.3d 1000, 1005 (Fed. Cir. 2003). However, this court reviews the ultimate legal conclusion regarding double patenting without deference. In re Goodman , 11 F.3d 1046, 1050 (Fed. Cir. 1993).

2008-1131 4A. Double patenting generally prevents a patentee from receiving two patents and extending the term of exclusiv ity for a single invention. See Perricone v. Medicis Pharm. Corp. , 432 F.3d 1368, 1372 (Fed. Cir. 2005). The proscription against double patenting takes two forms: st atutory and non-statutory. Id. Statutory, or “same invention,” double patenting finds its origin in the statutory grant of “a patent” for any new and useful invention. 35 U.S.C. § 101; Perricone , 432 F.3d at 1372-73. Nonstatutory, or “obviousness- type,” double patenting is a j udicially created doctrine designed to foreclose “claims in separate app lications or patents t hat do not recite the ‘same’ invention, but nonetheless claim inventions so a like that granting both exclusive rights would effectively extend the life of patent protection.” Perricone , 432 F.3d at

1373. In other words, the double patenting doctr ine is designed to prevent “unjustified timewise extension of the right to exclude.” In re Van Ornum , 686 F.2d 937, 943-44 (CCPA 1982). For instance, the doctrine bars an applicant from obtaining separate patents with separate terms fo r both a product and process for making that product, unless the product and process are “patentably distinct.” See In re Taylor , 360 F.2d 232, 234 (CCPA 1966); In re Cady , 77 F.2d 106, 109 (CCPA 1 935) (instructing that “double patenting is not sustainable when the product can be fabricated by processes other than that secured by t he issued process patent”) (quotation marks omitted). The PTO’s Manual of Patent Exam ining Procedure (MPEP) explai ns that a product and its process are patentably distinct if “the pr oduct as claimed can be made by another materially different process.” MPEP § 806.05.

2008-1131 5The parties agree that product and proce ss claims are patentably distinct if multiple processes for creating a product ex ist at the time of the invention. See, e.g., In re Cady , 77 F.2d at 109 (finding that the process of manufacturing roofing material was patentably distinct from roofing composition when “appella nt’s product as defined in the appealed claims may be produced by processes other than the processe s patented”). The novel legal question in this case asks if later-developed alternative processes are relevant in the product-proc ess “patentably distinct” inquiry. The PTO contends that the date of in vention, in this case Dece mber 19, 1974, governs the relevance of products and processes in th e double patenting cont ext. Thus, the PTO submits that the date of invention govern s the timing of doubl e patenting analyses because other issues relating to patentability are judged from the date of invention. For example, the patentability r equirements set forth in §§ 112, 102, and 103 are judged as of the date of inv ention or filing. See 35 U.S.C. §§ 112, 102, 103. The PTO does not cite statutory or case suppor t for the “date of invention” approach other than analogizing to these other patentability requirements. In the alternative, the PTO posits that alternative processes must at least appear before issuance of the primary patent application. Takeda, on the other hand, argues that the PTO’s appr oach is too limited. In its view, processes developed after the date of invention deserve a role in the double patenting calculus. Acknowledgi ng that this court has not directly addressed this legal question before, Takeda relies on a district c ourt case for the proposition that a court can look to processes developed after the dat e of invention for pr oduct-process double

2008-1131 6patenting situations. See Phillips Petroleum Co. v. U.S. Steel Corp. , 604 F. Supp. 555 (D. Del. 1985) ( Phillips ).

In Phillips , the district court c onsidered a process develope d in 1954, one year after the date of invention. Id. at 567. In a footnote, the di strict court noted that courts have considered developments in the art arising after the date of invention when resolving double patenting issues . In those cases, however, the parties did not object to the court’s consideration of pos t-date inventive developments. Id. at 568. The district court further noted the Board’s discussion in Ex Parte Hogan , No. 436-63, (Pat. & Tr. Office Bd. App. Mar. 30, 1981), a non-precedent ial case from the Board of Patent Appeals. In Ex Parte Hogan , the Board considered a la ter-disclosed process in a double patenting challenge. See slip op. at 5. Agreeing that later-developed processes are relevant to the “patent ably distinct” inquiry, the Phillips Court “decline[d] to conduct the double patenting analysis with blinders so as to avoid recognition or discourage disclosure of advances in process technology as a means of making a product patent.” Phillips , 604 F. Supp. at 568. This court affirmed Phillips on appeal. U.S. Steel Corp. v. Phillips Petroleum Co. , 865 F.2d 1247 (Fed. Cir. 1989) ( Phillips II ). In this case, Takeda argues that this court’s affirmance of Phillips rejected the PTO’s exact “date of invention” position. But on closer look, the only mention of double patenting in Phillips II is in the penultimate paragraph:

III. Remaining Arguments We have carefully considered de fendants’ arguments regarding: (1) double patenting . . . . We find none persuasive of error in the district court’s disposition of any of those issues and none of sufficient import to re quire discussion here of that disposition.

2008-1131 7IV. Conclusion The judgment of the district court is affirmed in all respects

.

Id. at 1253 (emphasis added). While Phillips II affirmed Phillips “in all respects,” this

court did not address the doubl e patenting argument. Thus, Phillips II did not present a rule or reasoning that decides the case before this court in this appeal. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc. , 937 F.2d 1572, 1581 (Fed. Cir. 1991) (“When an issue . . . is ignored in a decisi on, such decision is not precedent to be followed in a subsequent case in which the issue arises.”). The PTO argues that here, the product and process were not “patentably distinct” as of the date of invention, so the double patent ing doctrine should bar consideration of later-filed process claims. However, adopt ing the PTO’s approach of the “date of invention” is only appealing at first glance. It appears to prov ide a bright-line test that conforms to the perspective used in other patentability determinations. But as Takeda points out in its brief, the “date of invention” raises other substant ive questions such as: is the filing date the pr esumptive “date of invent ion”? If so, what is the date of invention, the domestic or foreign filing date? If foreig n, must a claim have been “perfected” under § 119(e) with the filing of a ce rtified copy of the origin al foreign application and an English language translation? What if the priority application contains support for some but not all of the pat ent claims? Would some of the claims be judged as of different cutoff dates? What if the invent or swears behind a reference? In contrast, the district court’s “doi ng away with blinders” approach allows an applicant to come forward with any evidence that its product and process are patentably distinct, even if the alternative process is de veloped decades after t he filing dates of the

2008-1131 8product and process applications. The approach provides the patentee with the best of both worlds: the applicant can use the filing date as a shield, enjoying the earlier priority date in order to avoid prior art, and rely on later-developed alte rnative processes as a sword to defeat double patenting challenges. Here, the primary application, directed to certain cephem compounds, was filed in the United States on December 19, 1975. The secondary application, directed to the pr ocess for making these cephem compounds, was filed in 1990. Yet the di strict court relied on patent applications published several decades later to show a patentable distinct ion between the product and process. This court is not persuaded by either approach. Neither approach addresses the policies underlying the double patenting doctrine. The se condary application (in this case, the process application of January 8, 1990) actually triggers the potential of an “unjustified extension of patent term.” When filing the secondary application, the applicant essentially avers that the product and process are “ patentably distinct.” Thus, the relevant time frame for determining whether a product and pr ocess are “patentably distinct” should be at the fili ng date of the secondar y application. In this case, Takeda filed the ’216 process patent application on January 8, 1990. This approach allows an applicant to rely on some later-develop ed methods to show that the product and process are “patentably distin ct,” even though the alternative processes for making that product may not have been known at the filing date of the primary application. This rule gives the applicant the benefit of future developments in t he art. At the same time, however, it prevents the inequitable situation that arises w hen an applicant attempts to

2008-1131 9rely on developments occurring decades a fter the filing date of the secondary application. 1 This approach should enc ourage the swift development of materially distinct, alternative processes. It is also consis tent with the district court’s opinion in Phillips , 604 F. Supp. at 567 (consider ing an alternative process developed one year after the filing date of the primary applicatio n, and prior to the filing of t he secondary application). Therefore, in this case, the applicant can rely on subsequent developments in the art up to January 8, 1990, the f iling date of the secondary applic ation, in order to show a patentable distinction between the cephem co mpounds claimed in the ’606 product patent and the process for making those compounds claimed in the ’216 process patent. In that regard, Takeda indicates that it disclosed an unclaimed process (which it terms the “Displacement Process” or the “U nelected Method”) in the ’888 product patent application. The PTO, however, has continually “dispute[d] the viability of the . . . [D]isplacement [P]rocess.” Additionally, Tak eda asserts that Method B, disclosed in the Gerlach and Monguzzi patents and described in t he Duggan Declaration, was disclosed as early as 1979. On this point, the PTO stat es that it “di[d] not dispute the technical merits of Dr. Duggan’s declaration” only fo r purposes of cross-motions for summary judgment. Further, the PTO stated in its mo tion for summary judgment that “[t]he only

1 The dissent’s hypothetical is a stretc h. It assumes nineteen years of copendency. Today, patent terms ar e triggered by the filing date, not the grant date. In other words, both the product and process patents will expire around the same time (although there may be slight variance due to patent term adjustment). As such, an applicant is less likely to maintain co-pen dency for nineteen years. Moreover, this court’s prosecution laches doctrine “may render a patent unenforce able when it has issued only after an unreas onable and unexplained delay in prosecution.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found. , 422 F.3d 1378, 1384-85 (Fed. Cir. 2005).

2008-1131 102008-1131 11 ‘alternative’ processes that Takeda (through Dr. Du ggan’s declaration) has identified to this Court are the processes described in . . . the ‘Gerlach’ paten t[ ] and in . . . the ‘Monguzzi’ patent[ ].” Today, this court holds t hat the district court may not rely on the Gerlach and Monguzzi patents. But questions of material fact remain as to (1) the viability of the Displacement Pr ocess, and (2) the disclosure date of Method B. On remand, the district court should determi ne whether these processes were disclosed before January 8, 1990, the date of filing of the ’216 proc ess patent.

III. Because genuine issues of material fa ct exist with respect to whether the cephem compound and later-developed processes are “patentably distinct,” this court vacates and remands for furt her factual development.

VACATED AND REMANDED

COSTS Each party shall bear its own costs.

## United States Court of Appeals for the Federal Circuit

2008-1131 TAKEDA PHARMACEUTICAL CO., LTD., Plaintiff-Appellee,

v.

John J. Doll, ACTING UNDER SECRETAR Y OF COMMERCE FOR INTELLECTUAL PROPERTY and ACTING DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellant.

Appeal from the United States District Court for the District of Columbia in case no. 06- CV-1640, Senior Judge Thomas F. Hogan.

SCHALL, Circuit Judge , concurring-in-part and dissenting-in-part. I agree with the majority that, in arguing against the claim of obviousness-type double patenting in the reexamination proceeding, Takeda should not be able to rely on the disclosures of the Gerlach and Monguzzi patents. However, I respectfully part company with the majority in its conclusi on that Takeda should be able to rely on developments in the art up to January 8, 1990, the date of the filing of the ’216 process patent application. In my vi ew, in arguing against the clai m of obviousness-type double patenting, Takeda should not be able to rely on disclosures after the December 19,1974 invention date. 1 I believe that tying the inquir y to the invention date is most commensurate with patent law as a whole and the policy goals relating to obviousnesstype double patenting. First, it seems to me that the date of invention is most appropriate because itcomports with current patentability doctrines, and, as I explain later, I view productprocess obviousness-type double patentin g as a patentability doctrine. See, e.g. , 35 U.S.C. § 102(a) (“A person shall be entitled to a patent unless . . . the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention ther eof by the applicant for patent .” (emphasis added)); 35 U.S. C. § 102(e) (“A person shall be entitled to a patent

unless . . . the invention wa s described in (1) an applicati on for patent, published under section 122(b) , by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an applica tion for patent by another filed in the United States before the invention by the applicant for patent . . . .” (emphases added)); Apotex Corp. v. Merck & Co. , 507 F.3d 1357, 1359 (Fed. Cir. 2007) (“ 35 U.S.C. § 102(g) provides that an applicant is not entitled to a patent if ‘ before such person’s invention thereof , the invention was made in th is country by another, who had not abandoned, suppressed, or concealed it.’ ” (quoting 35 U.S.C. § 102(g)) (emphasis added)); In re Translogic Tech., Inc. , 504 F.3d 1249, 1259 (Fed. Cir. 2007) (“An invention is unpatentable as obvious if the differences between the patented subject matter and the prior art would have been obvious at the time of invention to a person of ordinary skill in the ar t.” (emphasis added)); cf. Phillips v. AWH Corp. , 415 F.3d 1303,

1 The PTO and Takeda used this date as the “presumed date of invention” in briefing and argument, so I will use it here as well.

2008-1131 21313 (Fed. Cir. 2005) (en banc) (“We have m ade clear . . . that the ordinary and customary meaning of a claim term is the m eaning that the term would have to a person of ordinary skill in the art in question at the time of the invention , i.e., as of the effective filing date of the patent application.” (emphasis added)); Plant Genetic Sys., N.V. v. DeKalb Genetics Corp. , 315 F.3d 1335, 1339 (Fed. Cir. 2003) (“Enablement is determined as of the effective filing date of the patent .” (emphasis added)). Second, we have previously emphasized the invention date with respect to obviousness-type double patenting: The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the pat ent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made , taking into account the skill of the art and prior art other than the invention claimed in the issued patent. In re Longi , 759 F.2d 887, 893 (Fed. Cir. 1985) (e mphases from original omitted, emphasis added). Pertinent to this case, I view product-process obviousness-type double patenting as a patentability doctrine. At the date of inventi on, if only one process exists to make the product, the tw o are “substantially co-extensive.” See PTO’s Br. 17. To allow two patents to issue at that time w ould essentially run afoul of 35 U.S.C. § 101, as the applicant would be receiv ing two patents on one invention. 2 See, e.g. , In re Vogel , 422 F.2d 438, 441 (CCPA 1970); In re Ockert , 245 F.2d 467, 469 (CCPA 1957). In a difficult case, the majority settles upon what I would char acterize as a notunreasonable attempt at compromise. Re jecting the approaches of both Takeda and

2 Although this view is admittedly over ly simplistic, tracing the productprocess double patenting doctrine back to it s § 101 origins serves to bolster the connection between the doctrine and ot her questions of patentability.

2008-1131 3the government, it holds that “the relevant time frame for determi ning whether a product and process are ‘patentably distinct’ should be at the filing date of the [’216 process patent application].” It thus concludes, in the setting of a pre-1995 filing, that art developed after a product/process inventi on date, but before a subsequent process patent application filing date, can render a previously unpatentable proce ss patentable. Through its approach, the majority concludes it is preventing the patentee from having the best of both worlds, wher eby “the applicant can use t he filing date as a shield, enjoying the earlier priority date in order to avoid prior art, and rely on later-developed alternative processes as a sw ord to defeat double patenting.” Maj. op. at 8. However, while the majority’s approach is more restrictiv e than that urged by Ta keda, it still allows Takeda to exclude sixteen years of prior art for invalidity purposes (such as 35 U.S.C. §§ 102, 103), while simultaneou sly taking advantage of that art to overcome a doublepatenting rejection. This is what troubles me about the ma jority’s understandable desire to find a middle ground in this ca se. It allows Takeda to have it both ways. In addition, as far as I can tell, there is no other doctrine or rule that allows unpatentable material to spring back into patentability based on later developments in the field. As correctly stated by the majority, “‘[ t]he fundamental reason for the rule [of obviousness-type double patenting] is to prev ent unjustified timewise extension of the right to exclude granted by a patent no matte r how the extension is brought about.’” Eli Lilly & Co. v. Barr Labs., Inc. , 251 F.3d 955, 967–68 (Fed. Cir. 2001) (quoting In re Van Ornum , 686 F.2d 937, 943–44 (CCPA 1982)) (alterations in original). The majority’s approach, it seems to me, allows for su ch an extension. The product and the unpatentable process should bot h have entered into the public domain in 1998, when

2008-1131 4the ’606 patent expired. At that point, members of th e public should have been able to make the cephem compounds without paying royalties to Takeda or to another company. However, Takeda’s rights in the ’216 process patent will not expire until 2013—almost forty years after its process was fi rst disclosed. In my view, this is an “unjustified timewise extension” of the right to exclude. Although the cephem compounds are in the public domain, no currently unpatented method exists for making

them. I am also concerned that the majority’s appr oach could, in certain cases, result in the upsetting of reasonable expectations as to what is in the public domain. For example, let us assume we are in the sevent een-year regime, as we are in this case. Takeda is granted a product patent in year one. At that ti me, only one process exists (Process A). That process is disclosed, but not claimed, in the patent. In year eighteen, the product patent expires, putti ng Process A fully into the p ublic domain. In addition, during the seventeen-year patent term, no ot her process has been developed, and thus Process A remains unpatentable separately because it is coex tensive with the product patent. See In re Taylor , 360 F.2d 232, 234 (CCPA 1966); In re Cady , 77 F.2d 106, 109 (CCPA 1935) (“[D]ouble patenting is not sustai nable when the product can be fabricated by processes other than that secured by the issued process patent.”). Then, in year nineteen, a second process, called Process B, is invented for making the patented product. The initial inventor then files a patent applicat ion on Process A (assume proper co-pendency with the pr oduct patent), triggering dou ble-patenting concerns. According to the majority’s approach, this second process would cause Process A to become patentable, despite the fact that Process A and the resulting product were in

2008-1131 5the public domain for one year. It seems to me such a result runs counter to public expectation and patent law’s public notice function. Finally, the majority sets forth various qu estions which it says counsel toward its approach: [A]dopting the PTO’s approach of the “date of invention” is only appealing at first glance. It appears to provide a brightline test that conforms to the perspective used in other patentability determinations. But as Takeda points out in its brief, the “date of invention” raises other substantive questions such as: is the filing date the presumptive “date of invention”? If so, what is the da te of invention, the domestic or foreign filing date? If fo reign, must a claim have been “perfected” under § 119( e) with the filing of a certified copy of the original foreign application and an English language translation? What if the prio rity application contains support for some but not all of the patent claims? Would some of the claims be judged as of different cutoff dates? What if the inventor swears behind a reference? Maj. op. at 8. I do not share the majority’s concern. I think we must keep in mind these kinds of questions are faced regularly and have been manageable. For exam ple, interference proceedings provide a parallel to double-pat enting: a court (or the Board of Patent Appeals and Interferences) must look to the date of invention while evaluating two competing applications. That additional questions may have to be addressed if the approach urged by the government is adopted does not mean that we should ignore that approach if we feel it is correct. It may be that the new patent term will cure many of the concerns enumerated in this opinion. However, that does not me an that we should ignore those concerns. Obviousness-type double patenting is a judicially created doct rine, and using the date of invention best comports with our previously stated policy goal s underlying the doctrine.

2008-1131 62008-1131 7 For the foregoing reasons, I respectfully diss ent from the majority’s decision allowing Takeda to use developments in the art that post-date the date of invention in arguing against the obviousness-type double patenting rejection.