Acadia Pharmaceuticals Inc. v. Aurobindo Pharma Ltd., decided June 9, 2025

• Case Name: Acadia Pharmaceuticals Inc. v. Aurobindo Pharma Ltd., Aurobindo Pharma USA, Inc., Teva Pharmaceuticals USA, Inc., Defendants; MSN Laboratories Private Ltd., MSN Pharmaceuticals, Inc., Defendants-Appellants

• Court: United States Court of Appeals for the Federal Circuit

• Case Number: 2024-1401

• Appeal From: United States District Court for the District of Delaware, Nos. 1:20-cv-00985-GBW, 1:20-cv-01029-GBW, Judge Gregory Brian Williams

• Decision Date: June 9, 2025

• Judges: Moore (Chief Judge), Lourie, Bryson (Circuit Judges)

• Nature of Disposition: Nonprecedential

• Counsel:For Plaintiff-Appellee (Acadia): Chad Peterman, Paul Hastings LLP (also represented by Peter E. Conway, Scott Frederick Peachman, Bruce M. Wexler, Felix Eyzaguirre)

• For Defendants-Appellants (MSN): Chad A. Landmon, Polsinelli PC (also represented by Christopher Jones, Thomas K. Hedemann, Axinn, Veltrop & Harkrider LLP)
  

Key Issue on Appeal:

The central issue on appeal was whether claim 5 of U.S. Patent No. 9,566,271 ('271 patent) could serve as a reference for obviousness-type double patenting (ODP) to invalidate claim 26 of U.S. Patent No. 7,601,740 ('740 patent).

Summary of District Court Decision:

The District Court for the District of Delaware granted summary judgment of no invalidity, holding that claim 5 of the '271 patent could not be an ODP reference for claim 26 of the '740 patent.

Summary of Federal Circuit Decision: The Federal Circuit affirmed the district court's decision.

Main Themes and Important Ideas/Facts:

1. Obviousness-Type Double Patenting (ODP): The case revolves around the doctrine of ODP, which is designed to prevent unjustifiable extension of patent rights by prohibiting the issuance of claims that are not patentably distinct from earlier-issued claims by the same applicant or assignee, even if the claims are in different patents.

2. Controlling Precedent: The most critical fact highlighted by the court is that this case is entirely controlled by the Federal Circuit's recent decision in Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024). Both parties agreed that Allergan dictated the outcome.

3. The Allergan Rule: The Federal Circuit applied the specific holding from the Allergan case regarding the validity of claims when considering ODP references with different filing and issuance dates but a common priority date. The court explicitly quotes this key rule: "a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date."

4. Application of Allergan to the Facts: Based on the Allergan rule, the court concluded that claim 5 of the '271 patent was not a proper ODP reference for claim 26 of the '740 patent. While the specific filing, issuance, and expiration dates of the '271 and '740 patents are not detailed in this excerpt, the court's application of the Allergan rule indicates that the '740 patent claim must have been "first-filed, first-issued, later-expiring" relative to the '271 patent claim, which was the "later-filed, later-issued, earlier-expiring reference claim," despite both having a common priority date.

5. MSN's Stance: The appellants (MSN) acknowledged that the Allergan decision controlled the case and that their "only recourse is en banc action." This indicates MSN's recognition that the panel was bound by the Allergan precedent and that challenging this precedent would require a hearing before the full Federal Circuit bench.

6. Unreached Alternative Ground: The court noted that it did not need to reach the district court's alternative ground for rejecting ODP, which was based on the safe harbor provision of 35 U.S.C. § 121. This provision can protect certain claims derived from a divisional application against ODP challenges based on claims in the parent application. The court's reliance solely on the Allergan rule made the analysis under § 121 unnecessary for the outcome of this appeal.

7. Nonprecedential Disposition: It is important to note that this decision is marked as "nonprecedential," meaning it should not be cited as binding authority in future cases, although it illustrates the application of the Allergan rule.
   

Key Quotes:

• "Both parties agree this case is entirely controlled by our recent decision in Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024), which issued after briefing in this case was completed."

• "MSN recognizes its only recourse is en banc action."

• "We apply Allergan’s holding that “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date,” 111 F.4th at 1369, and conclude claim 5 of the ’271 patent is not a proper ODP reference that can be used to invalidate claim 26 of the ’740 patent."

• "We do not reach the district court’s alternative ground for rejecting ODP—that the safe harbor provision of 35 U.S.C. § 121 protects the ’740 patent against the ’271 patent."
  

Conclusion:

The Federal Circuit affirmed the district court's summary judgment based entirely on its recent decision in Allergan v. MSN, which established a specific rule for ODP analysis when claims share a common priority date but have different filing, issuance, and expiration dates. The court's application of the Allergan rule determined that the '271 patent claim could not serve as an ODP reference for the '740 patent claim under the specific temporal relationship between the two patents. The case highlights the controlling nature of recent Federal Circuit precedent and the limited options available to a party when such precedent directly governs the outcome.