by Dennis Crouch
In its new petition for certiorari in Cellect LLC v. Vidal, No. __ (U.S. May 20, 2024), Cellect argues that the Federal Circuit erred in upholding the PTAB’s (PTAB) invalidation of Cellect’s four patents based on the judicially-created doctrine of obviousness-type double patenting (ODP). The key issue is whether ODP can cut short the patent term extension provided by the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b). Meanwhile, Dir. Vidal is looking to extend the power of ODP via rulemaking. This is an important case coming at an important time.
The facts are as follows: Cellect owns four patents that claim technology related to image sensors in portable devices like cell phones and PDAs. All four patents claim priority to the same 1997 application, and therefore normally would have expired on the same date in 2017, 20 years from that priority date. However, due to delays by the PTO during prosecution, three of the four patents were granted PTA under § 154(b), ranging from 45 to 759 days. As a result, the patents had staggered expiration dates. Although the patents were related, the original examiner did not require the patentee to file a terminal disclaimer that would require the patents to all have the same term-ending date.
During reexamination proceedings initiated by Samsung, the patent examiner rejected the claims for ODP. By that time several patents had expired and Cellect could not cure the ODP rejections by filing terminal disclaimers. The Federal Circuit affirmed on appeal, holding that for PTA, “the expiration date used for an ODP analysis . . . is the expiration date after the PTA has been added.” Cellect now petitions for certiorari. The petition contrasts the statutory nature of patent term adjustment against the judge made equitable doctrine of obviousness type double patenting — recognizing here that the patentee has acted in good faith throughout the process.
Question Presented: Whether a patent procured in good faith can be invalidated on the ground that statutory Patent Term Adjustment, which requires lengthening a patent’s term to account for time lost to Patent and Trademark Office delays, can trigger a judge-made patent invalidation doctrine.
The doctrine of obviousness-type double patenting is a long-standing, judicially-created doctrine aimed at preventing inventors from improperly extending their patent monopoly by patenting obvious variations of the same invention in multiple patents. It is rooted in the idea that the public should only bear the costs of a patent monopoly once for a given invention. Thus, where an inventor holds two patents claiming obvious variants of the same invention, ODP can invalidate the later-expiring patent, because upon expiration of the first patent, the invention should enter the public domain. Historically, ODP was a much greater concern because patent terms were calculated as 17 years from the issue date, creating the possibility of greatly extending the expiry date. But that law changed 30 years ago, greatly reducing both the likelihood and potential harm of undue term extension.
Normally the obviousness doctrine first requires identification of prior art. With ODP, both patents typically have the same effective filing date and therefore are not prior art vis-a-vis one another. So, under the patent statute there is no reason to reject one of the patents. ODP though was created by the courts in an exertion of their equitable power, grounded in principles of fairness and public policy rather than statute. As an equitable doctrine, ODP is theoretically supposed to be flexible and applied based on the totality of circumstances in a given case. But as Cellect points out, the Federal Circuit here applied ODP rigidly, without considering the traditional equitable factors that might weigh against invalidating its patents.
Cellect’s key argument is that Federal Circuit’s holding violates the plain text of the PTA statute, which states that a patent’s term “shall be extended” if certain PTO delays occur, with limited exceptions not applicable here. 35 U.S.C. § 154(b). By allowing the judge-made ODP doctrine to override this statutory guarantee, the court improperly elevated its own precedent over the intent of Congress. The Federal Circuit’s disparate treatment of PTA versus Patent Term Extension (PTE) under 35 U.S.C. § 156 also justifies a second look. In Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), the court held that ODP cannot cut short a PTE because that would allow a “judge-made doctrine [to] cut off a statutorily-authorized time extension.” The same reasoning should arguably apply to PTA, as both statutes use mandatory “shall” language to guarantee extensions for PTO/FDA delays.
The PTA statute includes a carve-out for terminal disclaimers and so a win for Cellect here would likely not benefit a patentee who filed a terminal disclaimer. However, the case has recently taken-on much more importance with the USPTO’s renewed focus on OTP rejections and proposed onerous terminal disclaimer requirements.
Some key old cases:
- Bate Refrigerating Co. v. Sulzberger, 157 U.S. 1 (1895) (It is the province of the legislative branch of the government to say when a patent to an inventor shall expire.)
- Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894) (an early case articulating the reasons for the obviousness-type double patenting doctrine, namely that “the power to create a monopoly is exhausted by the first patent” and “a new and later patent for the same invention would operate to extend or prolong the monopoly beyond the period allowed by law.”)
- United States ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904) (warning against a “hard and fixed rule regarding the separation of related inventions” in the double patenting context.)
- United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933) (courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.”)
ODP is kind of archaic, but without it Congress would likely have to tighten the 103(c) safe harbor and specify PTA more carefully.
The conclusion that ODP should apply to PTA is somewhat consistent with pre-URAA practice that you get one 17 year term per invention. But one example gives me pause:
Say application 1 takes 5 years to issue, you get 2 years PTA to compensate, patent 1 expires 22 years post filing (17 years effective term). 3 years in, you file application 2, it issues 6 years in, but on time. Patent 2 has no PTA and expires 20 years post filing (14 years effective life). It doesn’t seem consistent with prior practice that patent 1 should be invalid for ODP; the effective patent life of the family is still not more than the 17 years we’ve long used as a benchmark. I suppose it could be justified as an application-reduction mechanism, but I’m not sure Congress had that in mind.
Dennis: “ Normally the obviousness doctrine first requires identification of prior art. With ODP, both patents typically have the same effective filing date and therefore are not prior art vis-a-vis one another. So, under the patent statute there is no reason to reject one of the patents. ODP though was created by the courts in an exertion of their equitable power, grounded in principles of fairness and public policy rather than statute.”
This seems to overstate the case just a tad. It’s true that there isn’t a section of the patent statute entitled “obviousness type double patenting” that describes the applicable circumstances and how to resolve them but given the express language of the patent statute (particularly the pre-94 language!) and the legislative intent, the creation of the doctrine was logically necessary to close an otherwise massive loophole. It’s not so much about “equity and fairness” as it is about common sense and reasoning. In that regard, ODP is much more like the judge-made “exceptions” to 101 than, say, the doctrine of equivalents.
Sounds like your version guarantees this to be ultra vires.
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Thanks for pointing out something I had not known, that the obviousness-type double patenting doctrine itself had been around before 1894, since it had Supreme Court blessing by then in Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894) per your cite.
ODP rejection during re-examination probably violates section 282 presumption of validity too.
+1. Great arg to include in re-exams.
The writing was on the wall when the PTO decided that a TD had to be filed in response to a provisional non-statutory DP rejection.
Yes, I also remember back when “when the PTO decided that a TD had to be filed in response to a provisional non-statutory DP rejection” even between otherwise unexamed pending application claims. But, isn’t that [rare?] warning [providing an opportunity to file a TD or fight it] better than having the issued patent invalided as uncureable later on when trying to enforce it?
With patent friends like the CAFC and Vidal, who needs enemies?
+1
OTDP doctrine does more harm than good, post GATT. Inventors should be entitled to a full patent term for the entire scope of our inventions, not just the portion covered by the first patent.
At the very least, it needs to be significantly more nuanced.
Maybe one could still justify the EQUITABLE rule in dense patent thicket, where much of the art is removed via common-ownership stuff… but other than that, it’s mostly just punishing the inventor for the PTO’s (government’s) failure to meet the statutory deadlines and/or the PTO’s (government’s) desire to maximize fee revenue.
As others have noted, free rides on the Office multiplying fees (and clients building portfolios from that) will be challenged more and more (and possibly reducing fees to the Office in no small amount).