What are the facts of the case?
The patent at issue (U.S. Patent No. 7,339,149, hereinafter “the ‘149 patent”) was filed November 16, 1999, by Magna with a priority date of February 26, 1993. The ‘149 patent was issued on March 4, 2008, after an interference proceeding which led to a patent term adjustment of 498 days.
The cited patent had a filing date of October 6, 2006, and was a continuation of the ‘149 patent. It issued on July 22, 2008, with only 63 days of a patent term adjustment but expired on February 26, 2013, because of a terminal disclaimer over a grandchild of a patent at issue, which did not earn any patent term adjustment.
Thus, the challenged patent was a parent patent which had earned patent term adjustment while the cited patent was its later grandchild with only a twenty-year term.
The District Court cited the case Gilead Sciences, Inc. v. Natco Pharma Limited, in which the court held that a patent that issues after—but expires before—another patent can qualify as a double patenting reference for that other patent.
However, the patents at issue in Gilead were not parent-child patents. Is this the end of the patent term adjustment?
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Silvia Salvadori, PhD