United States Court of Appeals 

for the Federal Circuit 

__________________________ 

SUN PHARMACEUTICAL INDUSTRIES, LTD., 

Plaintiff-Appellee, 

v. 

ELI LILLY AND COMPANY, 

Defendant-Appellant. 

__________________________ 

2010-1105 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Michigan in case no. 07-CV-15087, 

Judge George Caram Steeh. 

__________________________ 

Decided: July 28, 2010 

__________________________ 

JAMES F. HURST, Winston & Strawn LLP, of Chicago, 

Illinois, argued for plaintiff-appellee. With him on the 

brief were GAIL J. STANDISH and PETER E. PERKOWSKI, of 

Los Angeles, California. 

CHARLES E. LIPSEY, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, of Reston, Virginia, argued for 

defendant-appellant. With him on the brief were ROBERT 

D. BAJEFSKY, HOWARD W. LEVINE, ROBERT F. SHAFFER and 

JESSICA R. UNDERWOOD, of Washington, DC. Of counsel 
SUN PHARMACEUTICAL v. ELI LILLY 2

on the brief was JAMES P. LEEDS, Eli Lilly and Company, 

of Indianapolis, Indiana. 

__________________________ 

Before BRYSON, GAJARSA, and PROST, Circuit Judges. 

PROST, Circuit Judge. 

Appellant Eli Lilly and Company (“Lilly”) appeals 

from a final judgment of the U.S. District Court for the 

Eastern District of Michigan, finding claims 2, 6, and 7 of 

U.S. Patent No. 5,464,826 (“’826 patent”) invalid for 

obviousness-type double patenting over U.S. Patent No. 

4,808,614 (“’614 patent”). Because the district court 

correctly found these claims of the ’826 patent invalid, we 

affirm. 

BACKGROUND

Lilly markets the drug Gemzar® for the treatment of 

various forms of cancer. The active ingredient in 

Gemzar® is gemcitabine. Both patents at issue in this 

suit, the ’614 patent and the ’826 patent, cover gemcitabine and are therefore listed in the Food and Drug 

Administration’s (“FDA’s”) Approved Drug Products with 

Therapeutic Equivalence Evaluations (the “Orange Book”) 

with respect to Gemzar®. The ’614 patent claims gemcitabine, as well as a method of using gemcitabine for treating viral infections. The ’826 patent, however, claims a 

method of using gemcitabine for treating cancer. 

The ’614 patent, entitled “Difluoro Antivirals and Intermediate Therefor,” issued on February 28, 1989 and 

expired on May 15, 2010. The ’614 patent resulted from a 

divisional application, filed December 4, 1984, as a continuation-in-part of U.S. Patent Application Serial No. 
3 SUN PHARMACEUTICAL v. ELI LILLY

473,883 (“original ’883 application”), filed on March 10, 

1983.1 ’614 patent at [60], col.1 ll.7-11. 

The specification of the original ’883 application described only gemcitabine’s utility for antiviral purposes. 

The continuation-in-part that resulted in the ’614 patent 

added a description of gemcitabine’s anticancer utility to 

the specification. Specifically, the specification of the ’614 

patent explains: 

In addition to the antiviral utility of the present 

compounds, certain of the compounds of the present invention have also demonstrated excellent 

oncolytic activity in standard cancer screens. A 

particularly preferred compound with this utility 

is [gemcitabine]. This compound demonstrated 

activity in tumor systems L1210V lymphocytic 

leukemia, 6C3HED lymphosarcoma, CA-755 adenocarcinoma, P1534J lymphatic leukemia and 

X5563 plasma cell myeloma. 

Id. col.17 ll.53-63 (emphases added). Claims 1, 2, and 8 of 

the ’614 patent are directed to a class of nucleosides, 

which includes gemcitabine, whereas dependent claim 12 

is directed solely to gemcitabine. Id. col.19. l.56-col.22 

l.15. Claims 13 and 14 of the ’614 patent recite a method 

of using the claimed nucleosides, including gemcitabine, 

for treating Herpes viral infections. Id. col.22 ll.16-24. 

The ’614 patent does not claim a method of using any of 

the claimed nucleosides for treating cancer. 

 1 Lilly and Sun Pharmaceutical Industries, Ltd. 

(“Sun”) did not dispute before the district court or on 

appeal that the ’614 patent is entitled to the benefit of the 

filing date of the original ’883 application. See Lilly’s 

Principal Br. 8, 21; Lilly’s Reply Br. 12, 19. 
SUN PHARMACEUTICAL v. ELI LILLY 4

On December 4, 1984, the same day that Lilly filed 

the continuation-in-part that resulted in the ’614 patent, 

Lilly filed another patent application that ultimately 

issued as the ’826 patent. The ’826 patent, titled “Method 

of Treating Tumors in Mammals with 

2’,2’Difluoronucleosides,” issued on November 7, 1995. 

The ’826 patent expires on November 7, 2012, which is 

two-and-a-half years after the expiration of the ’614 

patent. Lilly did not file a terminal disclaimer with 

respect to the ’826 patent. 

Each claim of the ’826 patent is directed to a method 

of treating cancer with an effective amount of a class of 

nucleosides, which includes gemcitabine. Specifically, 

claim 1 of the ’826 patent recites “[a] method of treating 

susceptible neoplasms[, i.e., cancer,] in mammals comprising administering to a mammal in need of such 

treatment a therapeutically effective amount” of the class 

of nucleosides. ’826 patent col.23 l.41-col.24 l.46. Claim 2 

of the ’826 patent, which depends from claim 1, is specifically directed to a method of using gemcitabine “or a 

pharmaceutically acceptable salt thereof” for this purpose. 

Id. col.24 ll.46-48. Dependent claims 6 and 7 are directed 

to treating specific “susceptible neoplasms,” including 

“leukemias, sarcomas, carcinomas, and myelomas,” with 

the entire class of nucleosides and gemcitabine respectively. Id. col.24 ll.59-64. 

In 2006, Sun, a generic drug manufacturer, filed an 

Abbreviated New Drug Application (“ANDA”) with the 

FDA in which Sun sought approval to market a generic 

version of Lilly’s Gemzar® and certified that both the ’614 

patent and the ’826 patent were invalid or not infringed. 

On November 29, 2007, Sun filed this declaratory judgment action against Lilly, seeking declaratory relief that 

the ’826 patent is invalid and not infringed. Lilly filed 
5 SUN PHARMACEUTICAL v. ELI LILLY

counterclaims for infringement of the ’826 patent and the 

’614 patent. 

On August 17, 2009, the district court granted Sun’s 

motion for partial summary judgment that the asserted 

claims, namely claims 2, 6, and 7, of the later ’826 patent 

are invalid for obviousness-type double patenting over the 

earlier ’614 patent. Sun Pharm. Indus., Ltd. v. Eli Lilly 

& Co., 647 F. Supp. 2d 820 (E.D. Mich. 2009) (“Summary 

Judgment Order”). Relying primarily on our decisions in 

Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 

349 F.3d 1373 (Fed. Cir. 2003), and Pfizer, Inc. v. Teva 

Pharmaceuticals USA, Inc., 518 F.3d 1353 (Fed. Cir. 

2008), the district court concluded that, given the ’614 

patent’s disclosure of gemcitabine’s anticancer use, claim 

12 of the earlier ’614 patent, which claims gemcitabine, 

and claims 2, 6, and 7 of the later ’826 patent, which 

claim a method of using gemcitabine for cancer treatment, 

are not patentably distinct as a matter of law. Summary 

Judgment Order, 647 F. Supp. 2d at 824-25. 

Upon motion by Lilly, the district court, pursuant to 

Federal Rule of Civil Procedure 54(b), entered final judgment that the ’826 patent is invalid. Lilly timely appealed to this court. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1). 

DISCUSSION

“Double patenting is a question of law, which we review without deference.” Pfizer, 518 F.3d at 1363. Similarly, we review “a district court’s grant of summary 

judgment without deference.” Perricone v. Medicis 

Pharm. Corp., 432 F.3d 1368, 1372 (Fed. Cir. 2005). “A 

court considering summary judgment must draw all 
SUN PHARMACEUTICAL v. ELI LILLY 6

reasonable inferences in favor of the nonmovant.” Geneva, 349 F.3d at 1379. 

“The doctrine of double patenting is intended to prevent a patentee from obtaining a timewise extension of [a] 

patent for the same invention or an obvious modification 

thereof.” In re Basell Poliolefine Italia S.P.A., 547 F.3d 

1371, 1375 (Fed. Cir. 2008). The proscription against 

double patenting takes two forms: (1) statutory double 

patenting, which stems from 35 U.S.C. § 101 and prohibits a later patent from covering the same invention, i.e., 

identical subject matter, as an earlier patent, and (2) 

obviousness-type double patenting, which is a judicially 

created doctrine that prevents a later patent from covering a slight variation of an earlier patented invention. 

Perricone, 432 F.3d at 1372-73; see Geneva, 349 F.3d at 

1377-78. 

The second type of double patenting, obviousness-type 

double patenting, prohibits “claims in a later patent that 

are not patentably distinct from claims in a commonly 

owned earlier patent.” In re Basell, 547 F.3d at 1375. An 

obviousness-type double patenting analysis, which “compares claims in an earlier patent to claims in a later 

patent or application,” Geneva, 349 F.3d at 1378 n.1, 

consists of two steps, Pfizer, 518 F.3d at 1363. First, the 

court “construes the claim[s] in the earlier patent and the 

claim[s] in the later patent and determines the differences.” Id. Second, the court “determines whether those 

differences render the claims patentably distinct.” Id. “A 

later claim that is not patentably distinct from,” i.e., “is 

obvious over[] or anticipated by,” an earlier claim is 

invalid for obviousness-type double patenting. Eli Lilly & 

Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001). 
7 SUN PHARMACEUTICAL v. ELI LILLY

Our prior obviousness-type double patenting decisions 

in Geneva and Pfizer, which addressed factual situations 

closely resembling that presently before the court, control 

this case. In both cases, we found claims of a later patent 

invalid for obviousness-type double patenting where an 

earlier patent claimed a compound, disclosing its utility in 

the specification, and a later patent claimed a method of 

using the compound for a use described in the specification of the earlier patent. See Pfizer, 518 F.3d at 1363; 

Geneva, 349 F.3d at 1385-86. We held that a “claim to a 

method of using a composition is not patentably distinct 

from an earlier claim to the identical composition in a 

patent disclosing the identical use.” Pfizer, 518 F.3d at 

1363; Geneva, 349 F.3d at 1385-86. 

In Geneva, the earlier patent claimed a compound, potassium clavulanate, and the specification disclosed its 

effectiveness in inhibiting β-lactamase in humans. 349 

F.3d at 1384-86. The later patent then claimed a method 

of using the compound to effect β-lactamase inhibition in 

humans or animals. Id. In our obviousness-type double 

patenting analysis, we determined that to ascertain the 

scope of the earlier patent’s claim to the compound itself, 

we had to examine the specification of the earlier patent, 

including the compound’s disclosed utility. Id. at 1385. 

Upon reviewing this disclosure, we concluded that the 

claims of the two patents were not “patentably distinct” 

and thus the later patent was invalid for obviousness-type 

double patenting, because the later patent “claim[ed] 

nothing more than [the earlier patent’s] disclosed utility 

as a method of using the . . . compound.” Id. at 1385-86. 

Similarly, in Pfizer, the earlier patent claimed several 

compounds and the specification disclosed their use in 

treating inflammation and inflammation-associated 

disorders. 518 F.3d at 1363 & n.9; see U.S. Patent No. 
SUN PHARMACEUTICAL v. ELI LILLY 8

5,563,165 (“’165 patent”), at [57], col.1 ll.11-14, col.3 ll.3-

27. The later patent then claimed a method of using 

these compounds for treating inflammation, inflammation-associated disorders, and specific inflammationassociated disorders, including arthritis, pain, and fever. 

Pfizer, 518 F.3d at 1363 & n.9; see U.S. Patent No. 

5,760,068 (“’068 patent”) col.97 l.49-col.108 l.29. After 

rejecting the patentee’s objection to our consideration of 

the specification of the earlier patent, we determined that 

the later patent “merely claims a particular use described 

in the [earlier] patent of the claimed compositions of the 

[earlier] patent.” Pfizer, 518 F.3d at 1363 & n.8. As such, 

we concluded that the asserted claims of the later patent 

were not “patentably distinct” from the claims of the 

earlier patent, and thus the later patent was invalid for 

obviousness-type double patenting. Id. at 1368. 

Lilly attempts to distinguish Geneva and Pfizer from 

this case, arguing that the holding of these cases should 

be limited to their facts. Lilly contends that in both cases, 

the specification of the earlier patent disclosed a single 

use for the claimed compound, which was an essential 

part of the patented invention and thus necessary to 

patentability. Lilly argues that the double-patenting 

analysis of Geneva and Pfizer does not apply to the later 

’826 patent claims reciting a method of using gemcitabine 

for cancer treatment because, though the specification of 

the earlier ’614 patent disclosed gemcitabine’s use in 

treating both viral infections and cancer, the antiviral use 

provided the essential utility necessary to the patentability of the ’614 patent’s claim to gemcitabine. Lilly objects 

to what it characterizes as the district court’s extension of 

the obviousness-type double patenting analysis of Geneva

and Pfizer to any utility disclosed in the specification of 

an earlier patent. We reject Lilly’s argument. 
9 SUN PHARMACEUTICAL v. ELI LILLY

It is true that, as the Geneva court recognized, the 

earlier patent in Geneva disclosed a “single use” for the 

claimed compound, namely inhibition of β-lactamase. 349 

F.3d at 1384-86. However, the reasoning and holding of 

Geneva are not so limited. Id. Our later decision in Pfizer

demonstrates this point. We disagree with Lilly’s attempt 

to characterize Pfizer as involving a single disclosed 

utility, as well as with its argument that the decision’s 

rationale turned on this alleged single utility. 

First, Lilly’s classification of Pfizer is factually erroneous because the earlier patent’s specification unambiguously disclosed more than one utility for the claimed 

compound. Specifically, the specification of the earlier 

patent described the compound’s use in treating both 

inflammation and inflammation-associated disorders.2 

The specification also enumerated nearly fifty different 

inflammation-associated disorders, including pain, headaches, fever, arthritis, asthma, bronchitis, skin-related 

conditions, and gastrointestinal conditions, for which the 

claimed compounds “would be useful.” ’165 patent col.3 

ll.3-27. The specification’s discussion of the compounds’ 

use for both inflammation and inflammation-associated 

disorders, as well as the diverse range of ailments expressly included in the “inflammation-associated disorders” category, shows that the specification disclosed 

 2 See, e.g., ’165 patent, at [57] (“A class of . . . compounds is described for use in treating inflammation and

inflammation-related disorders.”) (emphasis added); id.

col.1 ll.11-14 (“This invention . . . specifically relates to 

compounds . . . for treating inflammation and inflammation-associated disorders, such as arthritis.”) (emphasis 

added); id. col.3 ll.3-27 (“Compounds of Formula I would 

be useful for the treatment of inflammation in a subject, 

and for treatment of other inflammation-associated 

disorders.”) (emphasis added). 
SUN PHARMACEUTICAL v. ELI LILLY 10

more than one use for the claimed compounds. The later 

patent even claimed the compounds’ use for inflammation, inflammation-associated disorders, and specific 

inflammation-associated disorders, including arthritis, 

pain, and fever, in separate dependent claims, further 

evidencing that the utilities disclosed in the specification 

of the earlier patent are distinct. See ’068 patent col.108 

ll.18-27. Therefore, we do not agree that Pfizer involved a 

single disclosed utility that was alone essential to the 

patentability of the claimed compounds. 

Moreover, the analysis in the Pfizer decision shows 

that obviousness-type double patenting encompasses any 

use for a compound that is disclosed in the specification of 

an earlier patent claiming the compound and is later 

claimed as a method of using that compound. Pfizer

never implies that its reasoning depends in any way on 

the number of uses disclosed in the specification of the 

earlier patent. See 518 F.3d at 1363. Instead, its broad 

analysis reflects that the court considered the multiple 

uses for the compound that were discussed in the specification of the earlier patent. Indeed, the Pfizer decision 

ultimately invalidated claims in the later patent that 

were separately directed to these multiple uses, including 

inflammation, inflammation-associated disorders, and the 

specific inflammation-associated disorders of arthritis, 

pain, and fever. Id. at 1363 & n.9; see ’068 patent col.108 

ll.18-27. 

Thus, the holding of Geneva and Pfizer, that a “claim 

to a method of using a composition is not patentably 

distinct from an earlier claim to the identical composition 

in a patent disclosing the identical use,” extends to any 

and all such uses disclosed in the specification of the 
11 SUN PHARMACEUTICAL v. ELI LILLY

earlier patent.3 Pfizer, 518 F.3d at 1363; Geneva, 349 

F.3d at 1385-86. Indeed, as both cases recognized, 

[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of 

matter, setting out at length in the specification

the useful purposes of such composition, . . . and 

then prevent the public from making any beneficial use of such product by securing patents upon 

each of the uses to which it may be adapted. 

Pfizer, 518 F.3d at 1363 n.8 (emphases added); Geneva, 

349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 

(CCPA 1931)). 

Furthermore, we reject Lilly’s argument that the district court erred in consulting the specification of the 

issued ’614 patent, as opposed to the specification of an 

earlier application, to ascertain the relevant disclosed 

uses of the compound gemcitabine for its obviousness-type 

 3 In rejecting Lilly’s proposed single, essential utility test, we also note that such a test would be unworkable. Where an earlier patent specification describes 

multiple uses for a compound, a court would be unable to 

identify the one use that was “essential” or “necessary” to 

patentability. Indeed, Lilly’s counsel repeatedly conceded 

at oral argument that “many times [a court] may not able 

to tell” which use was essential to patentability, as would 

be required under Lilly’s test. Oral Arg. at 3:39-6:03, 

available at http://oralarguments.cafc.uscourts.gov/mp3/2010-

1105.mp3; see id. at 9:48-10:42 (“In many cases, we concede th[is] could be a difficult inquiry.”); id. at 13:20-

13:58. Additionally, the characterization of the single 

essential utility might be arbitrary in application. For 

example, a broadly defined “single” utility might in actuality encompass multiple utilities, leading to significant 

problems in applying Lilly’s proposed standard. 
SUN PHARMACEUTICAL v. ELI LILLY 12

double patenting analysis. Both Geneva and Pfizer make 

clear that, where a patent features a claim directed to a 

compound, a court must consider the specification because 

the disclosed uses of the compound affect the scope of the 

claim for obviousness-type double patenting purposes. In 

Geneva, we acknowledged the general rule that an earlier 

patent’s specification is not available to show obviousnesstype double patenting. 349 F.3d at 1385. We have held, 

however, that there are “certain instances” where the 

specification of an earlier patent may be used in the 

obviousness-type double patenting analysis. In re Basell, 

547 F.3d at 1378. Specifically, the specification’s disclosure may be used to determine whether a claim “merely 

define[s] an obvious variation of what is earlier disclosed 

and claimed,” “to learn the meaning of [claim] terms,” and 

to “interpret[] the coverage of [a] claim.” Id. As we 

recognized in Geneva, a court considering a claim to a 

compound must examine the patent’s specification to 

ascertain the coverage of the claim, because a claim to a 

compound “[s]tanding alone . . . does not adequately 

disclose the patentable bounds of the invention.” 349 F.3d 

at 1385. In examining the specification of the earlier 

patent, the court must consider “the compound’s disclosed 

utility.” Id. 

We affirmed this holding in Pfizer by rejecting the 

patentee’s objection to our reliance on the specification of 

the earlier patent that claimed the compounds at issue 

and explaining that “[t]here is nothing that prevents us 

from looking to the specification to determine the proper 

scope of the claims.” Pfizer, 518 F.3d at 1363 (citing 

Geneva, 349 F.3d at 1386). Thus, we have expressly held 

that, where a patent claims a compound, a court performing an obviousness-type double patenting analysis should 

examine the specification to ascertain the coverage of the 

claim. 
13 SUN PHARMACEUTICAL v. ELI LILLY

In response to Lilly’s arguments, we determine that 

where such examination of the specification is appropriate in an obviousness-type double patenting analysis, the 

specification that must be considered is that of the issued 

patent. Lilly contends that the district court should have 

evaluated the ’614 patent’s claim to gemcitabine based on 

the specification that existed as of the undisputed effective filing date of the ’614 patent, namely the specification 

of the original ’883 application. The original ’883 application disclosed only gemcitabine’s antiviral use, not its 

anticancer use; Lilly added a description of gemcitabine’s 

anticancer use to the specification in a continuation-inpart application that eventually resulted in the ’614 

patent. Lilly therefore asks this court to ignore the ’614 

patent’s description of gemcitabine’s use in cancer treatment, because this disclosure was not part of the original 

’883 application. 

To support this argument, Lilly cites only the basic 

tenet of claim construction, as stated in Phillips v. AWH 

Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005), that claim 

terms should be given their ordinary and customary 

meaning and this meaning is the one 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.” Phillips, however, does not support the proposition that a court should 

ignore portions of the patent specification in construing 

claims. Instead, Phillips makes clear that claim terms 

must be construed in light of the entirety of the patent, 

including its specification, and that the specification to be 

consulted is that of the issued patent, not an earlier 

application. 

Specifically, Phillips, as well as the rest of our claim 

construction precedent, expounds that a “person of ordi-
SUN PHARMACEUTICAL v. ELI LILLY 14

nary skill in the art is deemed to read the claim term not 

only in the context of the particular claim in which the 

disputed term appears, but in the context of the entire 

patent, including the specification.” ICU Med., Inc. v. 

Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed. Cir. 

2009) (emphasis added); Aquatex Indus., Inc. v. Techniche 

Solutions, 419 F.3d 1374, 1380 (Fed. Cir. 2005); Phillips, 

415 F.3d at 1313. In other words, “the ‘ordinary meaning’ 

of a claim term is its meaning to the ordinary artisan 

after reading the entire patent.” ICU Med., 558 F.3d at 

1375 (emphasis added); Phillips, 415 F.3d at 1321. Phillips further explains the “fundamental rule” that claim 

terms “are construed with the meaning with which they 

are presented in the patent document.” 415 F.3d at 1316 

(emphasis added). As such, “[t]he construction that stays 

true to the claim language and most naturally aligns with 

the patent’s description of the invention will be . . . the 

correct construction.” Id. (emphasis added). 

In sum, our claim construction precedent establishes 

that claim terms must be construed in light of the entire 

issued patent. This precedent leaves no room for debate 

that the relevant specification for claim construction 

purposes is that of the issued patent, not an early version 

of the specification that may have been substantially 

altered throughout prosecution. There is no support for 

Lilly’s argument that the district court should have 

consulted the specification of the original ’883 application, 

which was changed before the ’614 patent issued, to 

construe the issued patent claims. Lilly cannot avoid 

portions of the specification of the ’614 patent by resorting 

to the specification as originally filed. 

We note that, where necessary in the obviousnesstype double patenting analysis, consulting the specification of the issued patent, as opposed to an earlier version 
15 SUN PHARMACEUTICAL v. ELI LILLY

of the specification, is consistent with the policy behind 

double patenting. As we stated in In re Kaplan, 789 F.2d 

1574, 1579-80 (Fed. Cir. 1986), “[a]ll proper double patenting rejections, of either type, rest on the fact that a 

patent has been issued and later issuance of a second 

patent will continue protection, beyond the date of expiration of the first patent” of the same invention or an obvious variation thereof. In other words, the double 

patenting doctrine is concerned with the issued patent 

and the invention disclosed in that issued patent, not 

earlier drafts of the patent disclosure and claims. 

In conclusion, the district court correctly followed the 

double patenting analysis of the Geneva line of cases, 

which address the situation in which an earlier patent 

claims a compound, disclosing the utility of that compound in the specification, and a later patent claims a 

method of using that compound for a particular use 

described in the specification of the earlier patent. As the 

district court recognized, claim 12 of the earlier ’614 

patent claims the compound gemcitabine. Following our 

precedent in Geneva, the district court properly considered the uses for gemcitabine disclosed in the specification of the issued ’614 patent, specifically its use in 

treating viral infections and cancer, to determine the 

scope of this claim. See Geneva, 349 F.3d at 1385; Summary Judgment Order, 647 F. Supp. 2d at 824-25. In 

light of the earlier ’614 patent’s description of gemcitabine’s use in treating cancer, the asserted claims of the 

later ’826 patent, which recite a method of using gemcitabine to treat cancer, are not patentably distinct from the 

’614 patent’s claim to gemcitabine. The asserted claims of 

the later ’826 patent simply claim the anticancer use 

disclosed in the specification of the ’614 patent as a 

method of use claim. See Pfizer, 518 F.3d at 1363; Geneva, 349 F.3d at 1385. Therefore, we affirm the district 
SUN PHARMACEUTICAL v. ELI LILLY 16

court’s judgment that the asserted claims, claims 2, 6, and 

7, of the ’826 patent are invalid for obviousness-type 

double patenting over the ’614 patent. 

AFFIRMED