Terminal Disclaimer Did Not Bind Patents for Unenforceability

In Pharmacia Corp., et al. v. Par Pharmaceutical, Inc. (Fed. Cir., Agust 10, 2005), the court held that a terminal disclaimer alone would not bind related patents together for purposes of unenforceability due to inequitable conduct.

The court distinguished the case from Hewlett-Packard Co. v. Baush & Lomb Inc., 882 F.2d 1556, 1563 (Fed. Cir. 1989) (inequitable conduct that occurs during prosecution of a reissue application renders all the claims of the reissued patent, including the original claims, unenforceable) by noting that although it involved two patents (i.e., an original patent and a reissue patent), the decision rendered only the claims in the single reissue patent invalid for inequitable conduct:

Hewlett Packard voluntarily surrendered the original patent in order to
enter reissue proceedings. Hewlett-Packard, 882 F.2d at 1564 (discussing the
surrender of an original patent to initiate reissue proceedings); see also 37 C.F.R. § 1.178(a) (2004) (requiring an offer to surrender the original patent or
statement that the original is lost or inaccessible to initiate reissue proceedings). Thus, this court’s inequitable conduct cases do not extend inequitable conduct in one patent to another patent that was not acquired through culpable conduct. In other words, these cases simply do not apply to the facts of this case, which involves two separate patents.

The court also noted that the specific terminal disclaimer in this case showed that the patentee justifiably expected individual treatment of the patents beyond their shared expiration date(emphasis added):

In making the above disclaimer, petitioner does not disclaim the terminal part of any patent granted on the instant application that would extend to the expiration date of the full statutory term as defined in 35 U.S.C. 154 to 156 and 173 of the prior patent as presently [shortened] by any terminal disclaimer, in the event that it later: expires for failure to pay a maintenance fee, is held unenforceable, is found invalid by a court of competent jurisdiction, is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321, has all claims canceled by a reexamination certificate, or is in any manner terminated prior to the expiration of its full statutory term as shortened by any terminal disclaimer.

My advice? You may want check your terminal disclaimer form for similar language.