Obviousness Type Double Patenting Invalidates Claim for Drug Earlier Claimed As Part of a Combination Capsule

Case: In re Metoprolol Succinate Patent Litigation (Fed. Cir. No. 06-1254 7/23/07)

The One Sentence Summary: The panel held that obviousness type double patenting invalidated a patent where the claimed compound was claimed in an earlier patent claiming the compound as part of a delayed release capsule, but summary judgment on inequitable conduct was in error.



Federal Circuit Holdings:

• Over a dissent, the panel held that a patent claiming the compound metoprolol succinate was invalid due to obviousness type double patenting where an earlier patent had claimed a combination of one compound of an enumerated list of eleven compounds (one of which is metoprolol succinate); (ii) an inner layer; and (iii) an outer layer.
• The district court erred in granting summary judgment invalidating the patent on inequitable conduct where issues of fact as to intent to deceive were created by deposition testimony denying intent to deceive.