Interference No. 103,950
In note 5 of its opinion, the Federal Circuit states in a
rather straightforward manner that "[a] patent owner cannot
avoid double patenting by disclaiming the earlier patent."
The entire note reads:
A patent owner cannot avoid double patenting by
disclaiming the earlier patent. Further,
because Lilly disclaimed the '213 patent [,
i.e., the "second patent"], it cannot now
terminally disclaim the '549 patent [, i.e., the
"patent on appeal",] to expire at the time the
'213 patent would have expired had it not been
disclaimed. That is, the fact that the '213
patent has been disclaimed is of no help to
Lilly, as double patenting precludes claim 7 of
the '549 patent from extending beyond the
termination date of the '213 patent, whether
that termination date is at the end of its
normal term or, as in this case, is the date it
is terminated via disclaimer.
In our opinion, the discussion in note 5 of Eli Lilly can
be argued to be inconsistent with the disclaimer dictum in
Heinle.
(2)
The discussion in note 5 of Eli Lilly also would appear
to be dictum given that Eli Lilly had not filed a terminal
disclaimer with respect to the patent on appeal. However, we
can understand why the Eli Lilly court made the observation in
its note 5. Had Eli Lilly terminally disclaimed that portion
term of the patent on appeal after 7 July 1998, a case or
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