Although the Federal Circuit recently affirmed a district court’s decision on patent invalidity based on obviousness-type double patenting, the case provides an impetus to review terminal disclaimer practice within a patent family.

AbbVie Inc. and affiliates (“AbbVie”) sued The Mathilda and Terence Kennedy Institute of Rheumatology Trust (“Patentee”) for declaratory judgment of patent invalidity of Patentee’s U.S. Patent No. 7,846,442 (‘442 patent), which was directed toward a method of treating a rheumatoid arthritis patient whose active disease is incompletely controlled. AbbVie had already licensed Patentee’s U.S. Patent No. 6,270,766 (‘766 patent), which is directed toward a method of treating rheumatoid arthritis in a patient in need thereof, but Patentee requested that AbbVie secure an additional license for the later issued ‘442 patent.