Interference No. 103,950
suggests to us, while not totally free from doubt, that the
CCPA majority's discussion about the disclaimers is dictum.
iii.
(1)
Recently, the Federal Circuit entered a merits panel
decision in Eli Lilly & Co. v. Barr Laboratories, Inc., 251
F.3d 955, 58 USPQ2d 1865 (Fed. Cir. May 30, 2001).
In Eli Lilly, the Federal Circuit had before it a double
patenting issue. On the "merits," the Federal Circuit held
that claim 7 of the "patent on appeal" (U.S. Patent 4,626,549,
issued 2 December 1986) was invalid on double patenting
grounds over claim 1 of a "second patent" of Eli Lilly (U.S.
Patent 4,590,213 issued 20 May 1986). The patent on appeal
was due to expire at the end of its statutory term, but on 7
July 1998, a statutory disclaimer was filed in connection with
the second patent. Accordingly, the life of the second patent7
ended on 7 July 1998.
7 We were unable to find the date of the disclaimer in the Federal Circuit's
Eli Lilly opinion. However, we take official notice based on the USPTO's PALM system
that the disclaimer was accepted by the USPTO on 7 July 1998, during pendency of the Eli
Lilly litigation.
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