Scott Daniels & Steve Adrian

Hubbell argued that obviousness-type double patenting is not appropriate where the application and the conflicting claim (1) share common inventors but do not have identical inventive entities, (2) were never commonly owned, and (3) are not subject to a joint research agreement. The Patent Office countered that: (1) whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees; (2) identity of inventorship is not required where there is an overlap in inventors; (3) Hubbell did not establish any grounds for being allowed to file a terminal disclaimer; and (4) two-way obviousness analysis is not required because Hubbell admitted that he partially is responsible for the delay that caused the ’685 patent claims to issue first. The CAFC agreed with the Patent Office on each point.