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Sandoz Inc., et al. v. Immunex Corporation, et al.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2020-1037 · judgment July 1, 2020


Certiorari denied · May 17, 2021
Pre-decision estimate: 8% cert probability (95% interval 5%–12%)

Before the decision, about 1.9× the 4.1% base rate. The model weighted this up for counsel who has won certiorari before, a dissent in the court below (flagged in the petition), and a Federal Circuit decision below, and down for a business respondent.

Question presented

Under federal patent law, a patent owner may receive only one period of exclusivity for its invention and may not obtain a second patent on the same invention or a “colorable variation” thereof. McCreary v. Pa. Canal Co., 141 U.S. 459, 467 (1891). The question presented is: May the patent owner avoid the rule against double patenting by buying all of the substantial rights to a second, later-expiring patent for essentially the same invention, so long as the seller retains nominal ownership and a theoretical secondary right to sue for infringement?

Counsel of record

For petitioner
William McGinley Jay
Goodwin Procter, LLP

For respondent
Constantine L. Trela Jr.
Sidley & Austin

Case

Conference history
Distributed for 1 conference

Amicus briefs
1 cert-stage

Proceedings

  1. May 17 2021
    Petition DENIED.
  2. Apr 27 2021
    DISTRIBUTED for Conference of 5/13/2021.
  3. Apr 26 2021
    Reply of petitioners Sandoz Inc., Sandoz International GmbH, Sandoz GmbH filed. (Distributed)
  4. Apr 12 2021
    Brief of respondents Immunex Corp., et al. in opposition filed.
  5. Mar 15 2021
    Brief amici curiae of Association for Accessible Medicines and America's Health Insurance Plans, Inc. filed.
  6. Feb 25 2021
    Motion to extend the time to file a response is granted and the time is extended to and including April 14, 2021.
  7. Feb 24 2021
    Motion to extend the time to file a response from March 15, 2021 to April 14, 2021, submitted to The Clerk.
  8. Jan 29 2021
    Petition for a writ of certiorari filed. (Response due March 15, 2021)