Availability of Alternative Process Avoids Double Patenting Based Upon Expired Corresponding Compund Patent

In Takeda v. Dudas (D.D.C. 2007), the district court considered evidence of alternative processes for making a formerly patented compound in order to avoid having to consider the USPTO's novel theory of double patenting between product and process claims where "some or all of the compound claims of an expired compound patent continue to be monopolized by virtue of patent rights in a narrow method patent." According to the Memorandum by Chief Judge Hogan on appeal from the USPTO Board, "Because viable, alternative processes exist to make the products claimed in the '6o6 patent, the Court finds that the '216 patent's process claim is patentably distinct from the '606 patent and therefore holds, as a matter of law, the '216 patent is not invalid on double patenting grounds.