Patent claims held invalid due to nonstatutory double patenting
Boehringer Ingelheim Int’l GMBH, et al. v. Barr Laboratories, Inc., et al., No. 05-700-JJF, June 16, 2008.
Farnan, J. After a bench trial, the Court issued findings of fact and conclusions of law. The Court ruled that disputed claims were infringed, but that the claims at issue are invalid for nonstatutory double patenting.
This dispute arose when Defendants filed ANDAs relating to generic forms of MIRAPEX with the active ingredient pramipexole dihydrochloride used for treatment of idiopathic Parkinson’s disease and restless leg syndrome. The Court finds that the differences between the ‘812 patent and the ‘086 patent are insufficient to support patentability of the ‘812 patent in light of the ‘086 patent. The ‘086 patent is directed to methods of treatment using tetrahydrobenzthiazoles, the compounds claimed in the later ‘812 patent. One skilled in the art would recognize that in order to practice the claims of the ‘086 patent, one must have the specified compounds. The fact that the compound claims of the ‘812 patent have use for treatment of conditions different from those specified in the ‘086 patent does not change the result. The filing of a Terminal Disclosure at trial does not moot the double patenting defense since the earlier patent had expired prior to the filing of the Terminal Disclosure.
A full copy of the opinion is available here.
