Whether a patentee may obtain a second patent on the same invention actually covered by a former patent to the same patentee

QUESTIONS PRESENTED 1. This Court has long held that “no patent can issue for an invention actually covered by a former patent, especially to the same patentee.” Miller v. Eagle Mfg. Co., 151 U.S. 186, 198 (1894). Because what is already known to the public cannot be taken from it, the issuance of a second patent to an obvious portion of a patented invention is precluded. Petitioners respectfully request this Court to clarify: Whether, under this Court’s well-settled precedent, a patentee may obtain a second patent on the same invention actually covered by a former patent to the same patentee. 2. Holding a claimed invention is obvious requires deciding factual questions, such as the scope and content of the prior art, and the differences between the prior art and the claims at issue. 35 U.S.C. § 103; Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). This inquiry is flexible, expansive and technology-neutral. § 103; ASR Int7 Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Federal Circuit subverts this principle by applying its own restrictive, technologyspecific threshold test. Petitioners respectfully request this Court to clarify: Whether, under 35 U.S.C. § 103, a patent may be obtained when the differences between the claimed invention and the prior art were obvious to a person having ordinary skill in the art, but—before addressing the Graham factors—a judge decides that an undisputed prior-art reference does not meet the Federal Circuit’s restrictive “lead compound test”.