Before Lourie, Reyna, and Chen. Appeal from the U.S. District Court for the Eastern District of Texas, Judge J. Rodney Gilstrap.
Summary: Filing a terminal disclaimer to overcome an obviousness-type double patenting rejection is not an admission that the continuation claims are patentably indistinct over the parent.
SimpleAir owned several patents linked by continuation applications, all claiming priority to a single provisional application. During prosecution, SimpleAir had filed terminal disclaimers for each child, to overcome obviousness-type double patenting rejections. In serial litigation, SimpleAir asserted several patents from the family against Google, resulting in three prior judgments of noninfringement. The district court dismissed SimpleAir’s fourth suit against Google—involving two additional familial patents—based on claim preclusion. The court determined that the terminal disclaimers constituted an admission that the patents-in-suit were patentably indistinct from the previously asserted patents. The district court never compared the claims of the newly asserted patents to the previously adjudicated patents.
The Federal Circuit reversed. A district court cannot presume that a terminally-disclaimed continuation patent presents the same cause of action as a parent based on the filing of a terminal disclaimer alone. Because there is no prohibition on broadening claims in a continuation patent subject to a terminal disclaimer, the terminal disclaimer itself is not a sufficient basis to support a finding of claim preclusion. The Federal Circuit stated, however, that filing a terminal disclaimer to overcome a double patenting rejection is “a strong clue” that the claims in the continuation lack a patentable distinction over the parent. The Federal Circuit remanded to provide the district court an opportunity to compare the claims of the asserted patents with the previously adjudicated claims, to determine if the new claims give rise to a different cause of action.