By Order entered on October 29, 2010 followed by a Memorandum Opinion entered by Chief Judge Gregory M. Sleet on November 5, 2010 in the consolidated action, Eli Lilly and Company, et al. v. Teva Parenteral Medicines, Inc., et al., C.A. No. 08-335-GMS (D.Del.), the Court held that the prior art rules found in 35 U.S.C. § 102 ("§ 102") including the dates set forth in the relevant provisions of § 102, shall apply to its analysis of determining the relevant date(s) for whether a reference or use constitutes prior art for the purposes of an obviousness-type double patenting defense. Id. at 7.

Copies of the Order and Memorandum Opinion are attached.

In its motion, plaintiff Eli Lilly argued that, although § 102 governs what type of references constitute prior art, it does not resolve for the purposes of an obviousness-type double patenting (“OTDP”) analysis the question of “in light of the prior art as of what date?” Id. at 2. The Court, however, disagreed and rejected Eli Lilly’s attempt to get the Court to draw a line between the questions of “what” and “when” in the OTDP analysis. The Court reasoned that “[a]dopting Eli Lilly’s argument would, in effect, require the court to view some portions of [§ 102] as controlling while viewing others as irrelevant in the OTDP context. Since one cannot easily disentangle the prior art framework created by § 102, adopting such an approach would be problematic.” Id.

The Court further reasoned that, “[i]f the Federal Circuit wished to carve out such exceptions from § 102, it surely would provide explicit direction rather than allowing exceptions to be created by implication. … [T]he Federal Circuit has never indicated that such exceptions have been made either for double-patenting cases in general or for OTDP cases in particular.” Id. at 2-3.  Accordingly, the Court held that the prior art rules found in § 102, including the dates set forth in the relevant provisions, do apply to the OTDP analysis. Id. at 7.