I find nothing more pleasing than when the parties dispute the test to be applied. Facts are always messy and disputed, but an argument about the proper test is almost always elegant. Truly it is a beauty fit for a post.
The particular test at issue in Azurity Pharms., Inc. v. Bionpharma Inc., C.A. No 21-1286-MSG (D. Del. Jan. 6, 2023) (Mem. Op.) whether new patent claims were the “same cause of action” for the purposes of claim preclusion.
The plaintiff argued that the well-worn rule that claim preclusion would apply to later patent claims if "the scope of the asserted patent claims in the two suits is essentially the same." Defendant, however, offered the novel argument that "two patent claims are 'essentially the same' if the second claim would have been obvious to one skilled in the art with knowledge of the first claim."
Judge Goldberg described apparent chain of reasoning thusly:
The parties’ divergent positions stem from the following sentence in the Federal Circuit’s SimpleAir decision: “In applying [the claim preclusion] standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same.” . . The underlined term “patentably indistinct” is also used in the doctrine of obviousness-type double patenting, where it means that “the [later] claims are obvious over the [earlier] claims.” . . . Bionpharma argues that by using the term “patentably indistinct,” the Federal Circuit imported the test for obviousness-type double patenting into the claim preclusion context.
Id. at 6 (cleaned up)
This is the fun of truly arcane lawyering—making connections in different doctrines, drawing parallels, really getting in the weeds.
Unfortunately, it did not work for a bevy of reasons:
The Federal Circuit has interpreted SimpleAir differently than how Bionpharma advocates. In XY, LLC v. Trans Ova Genetics, LC, 968 F.3d 1323 (Fed. Cir. 2020), the Federal Circuit quoted SimpleAir for the proposition that “a judgment in the first suit will trigger claim preclusion only if the scope of the asserted patent claims in the two suits is essentially the same.” Id. at 1333. In Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1336 (Fed. Cir. 2019), the court similarly characterized SimpleAir, citing it only for the proposition that claim preclusion turns onwhether the claims are “essentially the same.
Id.
Second, other statements in SimpleAir show that the test for claim preclusion differs from the test for obviousness-type double patenting. If the two tests were the same, features that are true for one test would also be true for the other test, but this is not the case. As set out in SimpleAir, claim preclusion can be avoided if the later-asserted claims “provide larger claim scope” than the earlier-asserted ones. 884 F.3d at 1167. But obviousness-type double patenting is not avoided when the later claims are broader in scope than the earlier claims.
Id. at 7.
Third, to the extent SimpleAir impliedly referenced the test for obviousness-type double
patenting, that reference was unnecessary to the outcome and therefore dictum.
Id.
After that it descends into a discussion of facts of no particular interest, but the whole thing is worth a read.
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