One-way Test For Obviousness-Type Double Patenting Does Not Require Full Graham Analysis
Client Alert | 1 min read | 11.24.08
In re Basell Poliolefine Italia S.P.A. (No. 07-1450; November 13, 2008) involves a Director-ordered reexamination of claims directed to processes for polymerizing and copolymerizing olefins with a catalyst obtained by reacting an aluminum alkyl compound with a titanium halide compound. In this case, the Federal Circuit affirms the Board of Patent Appeals and Interferences' finding of obviousness-type double patenting over an expired U.S. patent issued to the same inventor.
On appeal from the Board, the Federal Circuit holds that Applicants' actions or inactions that delayed prosecution, including repeatedly filing continuing applications without appeal, require application of the one-way test for obviousness-type double patenting. The one-way test generally applies where a first-filed application to a basic invention issues as a patent before a second-filed application to an improvement of that invention. In contrast, the two-way test applies where the second-filed application issues before the first-filed application solely due to PTO delays. Since delays due solely to the PTO were not present in this case, the one-way test applied. In particular, the Federal Circuit noted that Applicants did not file claims resembling the claims at issue until nine years after the application that resulted in the expired patent, and those claims were filed only for interference purposes. In addition, Applicants repeatedly filed claims directed to unrelated inventions, advocated for interferences for unrelated inventions, and repeatedly filed continuing applications without appeal.
The Federal Circuit further holds that the one-way test does not require a full Graham analysis. Although the Board failed to consider each of the Graham factors, it was enough for the Federal Circuit that the Board found the claims at issue to be an obvious variant of a claim in the expired patent.
Insights
Client Alert | 8 min read | 06.30.25
AI Companies Prevail in Path-Breaking Decisions on Fair Use
Last week, artificial intelligence companies won two significant copyright infringement lawsuits brought by copyright holders, marking an important milestone in the development of the law around AI. These decisions – Bartz v. Anthropic and Kadrey v. Meta (decided on June 23 and 25, 2025, respectively), along with a February 2025 decision in Thomson Reuters v. ROSS Intelligence – suggest that AI companies have plausible defenses to the intellectual property claims that have dogged them since generative AI technologies became widely available several years ago. Whether AI companies can, in all cases, successfully assert that their use of copyrighted content is “fair” will depend on their circumstances and further development of the law by the courts and Congress.
Client Alert | 3 min read | 06.30.25
Client Alert | 3 min read | 06.26.25
FDA Targets Gene Editing Clinical Trials in China and other “Hostile Countries”
Client Alert | 3 min read | 06.26.25
