by Dennis Crouch
The Federal Circuit’s 2023 decision in In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). Cellect is now seeking certiorari, and the New York Intellectual Property Law Association (NYIPLA) has stepped in with an amicus brief supporting the petition, arguing that the case presents “questions of exceptional importance.” Brief for New York Intellectual Property Law Association as Amicus Curiae Supporting Petitioner at 23, Cellect, LLC v. Vidal, No. 23-1231 (U.S. May 28, 2024).
The case arose after Cellect sued Samsung for infringing four of its patents relating to image sensors. Although the patents all had the same effective filing dates, their expiry dates were different since some of the patents had been awarded term adjustment (PTA) because of USPTO delays. Samsung successfully requested ex parte reexamination, arguing that the patents were invalid for ODP. The crux of the dispute is whether Cellect, by receiving PTA on some of the patents has improperly used double patenting to extended its patent term. The USPTO and Federal Circuit both concluded that, under the judge-made law of ODP, Cellect’s PTA-extended patent terms rendered the patents invalid for double patenting.
In its petition, Cellect argues that the Federal Circuit’s approach contradicts the plain text of § 154(b), which provides that a patent’s term “shall be extended” to account for USPTO delays. Cellect contends that this statutory language leaves no room for a judge-made doctrine like ODP to cut short the PTA term guarantee. It also argues that the Federal Circuit’s ruling on PTA is inconsistent with its prior decision in Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), which held that a related statute providing for Patent Term Extension (PTE) due to FDA regulatory delays is not limited by ODP.
The newly filed NYIPLA brief expands on these arguments and offers additional reasons why the Supreme Court should take up the case. The brief presents three questions:
- Can the ODP doctrine vitiate Congressional guarantees of timely patent examination, thereby allowing the USPTO and courts to use those guarantees to invalidate patents solely based upon PTA?
- Did the Federal Circuit err when it eliminated all equitable considerations from the ODP analysis, disregarding the reasons for ODP’s creation and ignoring binding precedent?
- Was the ODP doctrine, established when patent terms were measured from issuance, abrogated when Congress changed how terms are measured such that all patents sharing a priority application expire on the same day unless a Congressionally mandated extension applies?
These questions reframe the issues to emphasize the conflict between the PTA statute and ODP, the Federal Circuit’s departure from traditional equitable principles, and the potential obsolescence of ODP in light of changes to how patent terms are calculated.
NYIPLA argues that the Federal Circuit “ran roughshod over statutory guarantees requiring that the PTO timely examine patent applications or extend the resulting patent’s life for the undue delays.” It contends that the court “ignored binding precedent; misapplied an equitable doctrine as a rigid, strict liability standard; and explicitly stated that equities do not matter.” Id. In doing so, NYIPLA asserts, the Federal Circuit has “usurp[ed] Congress’s Authority.” Id. at 8.
The brief traces the history of ODP, explaining that it arose in a time when “gamesmanship could result in improper extensions of patent term.” But with the shift to a patent term that runs 20 years from the filing date, rather than 17 years from issuance, NYIPLA argues that “there is no risk of the ‘unjustified timewise extension of right to exclude’ that necessitates disclaiming patent term amongst family members that share a common filing date, which was the impetus for courts creating ODP.” quoting In re Schneller, 397 F.2d 350, 354 (C.C.P.A. 1968).
NYIPLA also takes issue with the Federal Circuit’s rejection of equitable considerations in its ODP analysis. It contends that precedent requires that a court consider the equities before rejecting patent rights based upon ODP. In this case, for instance, the evidence available thus far indicates that the patentee operated entirely in “good faith.” See, Thomson-Houston Electric Co. v. Ohio Brass Co., 80 F. 712, 724 (6th Cir. 1897) (explained that a rule applying ODP regardless of gamesmanship “would be a hard one”).
NYIPLA further argues that the Cellect decision will have “widespread impact,” noting that “[h]alf of all US patents receive PTA, making this a very important matter for the innovation and patent community.” The brief contends that the decision “destroys ‘patent term guarantee[s]’ that Congress enacted to ensure prompt PTO examination, so patentees get a full patent term.” The association also warns that the decision “harms the innovation economy, particularly small businesses, by disrupting those settled expectations.”
NYIPLA cites two articles. The first is a 2019 article by Daniel Kazhdan who is now a PTAB judge. Daniel Kazhdan, Obviousness-Type Double Patenting: Why It Exists and When It Applies, 53 AKRON L. REV. 1017 (2019). The second is a an older one by IP historian Edward Walterscheid. Edward C. Walterscheid, Historical Development of the Law of Double Patenting up through the 1952 Patent Act, 4 APLA Q.J. 243 (1976). Kazhdan traces the two primary justifications for the ODP doctrine: a patentee-based rationale focused on preventing inventors from improperly extending their patent monopoly, and a public-rights rationale focused on ensuring the public can use inventions claimed in expired patents. He argues that the patentee-based rationale has less force today, when patent terms are measured from filing rather than issuance, while the public-rights justification remains relevant. This tension is at the heart of the current controversy over whether PTA-extended parent patents should be subject to ODP in light of later-issuing child patents. Walterscheid’s article, while older, provides a comprehensive look at the twists and turns of double patenting law prior to the 1952 Patent Act. It is relevant because the Supreme Court has not addressed this judge-made doctrine since then. However, neither article provides an in depth view of the equity issue that I believe is most likely to persuade the Court.
Read more here: https://plus.lexis.com/newsstand/law360/article/1841707
Another aspect of the equities argument is do we really want examiners enforcing equitable doctrines?
Given SCOTUS’ unwavering respect for Congress having sole constitutional authority for all things patent, what could go wrong?
Re: The NYIPLA brief “..arguing that the case presents ‘questions of exceptional importance.’ ”
How many patent suits a year actually occur with all four situations: the patent had obtained a term extension beyond 20 years from its priority date, that patent is sued on, that patent has a OTDP problem with a related application or patent having the same priority date but a shorter term, and a terminal disclaimer had not been filed before that patent issued?
How many patent suits a year actually occur with all four situations: the patent had obtained a term extension beyond 20 years from its priority date, that patent is sued on, that patent has a OTDP problem with a related application or patent having the same priority date but a shorter term, and a terminal disclaimer had not been filed before that patent issued?
A patent obtaining a term extension is pretty common.
The same patent being litigated is also pretty common.
If the patent is within a patent family (i.e., patents sharing the same specification then having patent terms is pretty common).
As for “a terminal disclaimer had not been filed before that patent issued” … you need to specify what “patent” you are referring to. Your hypothetical refers to a bunch of different possible patents. Regardless, there are certainly instances in which two patents within the same family do not have terminal disclaimers with regard to one or the other or both.
Basically, if you file an omnibus application (i.e., a specification that covers multiple different inventions that could be embodied in a single product) and one sues on one of the patents issued, then your scenario would be quite common.
That is not all four situations occuring to one patent.
The needed terminal disclaimer of course needs to specifically cover and protect the patent being sued on and being accused of OTDP-invalidity. [And common ownership should be part of it.]
“A specification that covers multiple different inventions” is not going to have an OTDP problem if protected by statute by a restriction requirement and the claims in the resulting separte applications are maintained in accordance with the restrictions.
if protected by statute by a restriction requirement
This presumes that claims were originally filed that covered the various different inventions and were subject to restriction requirements. While this sometimes happens, this is hardly common.
Interestingly, nobody seems to be proposing a simpler and less harsh remedy, of allowing terminal disclaimers to be filed in issued patents with extended terms instead of invalidating the patent? Because that would not extend patent terms?
Or, for that matter, replacing the terminal disclaimer ‘remedy’ with a mere common-ownership obligation…which, imho, would be more in line with Congressional intent.
While a “common-ownership obligation” is a nice compromise, I don’t see the need for whole doctrine as it stands now.
The 20 years from filing limit to patent term eliminated the biggest concern. As for common ownership, it is far easier for parties to determine ownership of patents today than it was 20, 30, 40, or 50 years ago. As such, there should be no surprises when it comes to having one party look for a license and then have a second party look for a license on a patent for another variation.
The original concern was that filing a series of patents in the same family, that issued at different times would lengthen the effective patent life beyond the 17 years allotted by the statute.
The current regime largely fixed that, but it’s still possible to get more than your 17 years by filing continuations and trawling for PTA that lengthens your effective patent term beyond 17 years. In other words, you really aren’t prejudiced by delays that give you PTA on a continuation if you already had the parent application issued and in force.
The current regime largely fixed that, but it’s still possible to get more than your 17 years by filing continuations and trawling for PTA that lengthens your effective patent term beyond 17 years.
PTA is a direct result of USPTO inaction. If you have a Continuation Application in which the parent is allowed, the Examiner should either be able to get a first action mailed within 14 months and get the action to a RCE (or allowance) within 3 years. Continuations should be easier for an Examiner to examine than the original application. As such, if the patent term gets extended, that is the fault of the USPTO.
In other words, you really aren’t prejudiced by delays that give you PTA on a continuation if you already had the parent application issued and in force.
I know of instances in which the applicant decided to take narrow claims in a parent application and tried to get (deserved) broader claims in the parent. While the parent may have issued without PTA, the Continuation does because applicant appealed and won. In that instance, the applicant shouldn’t be denied that PTA.
+1
Yes, the PTO continues its long-standing false-dates-false-docketing. Treating continuations as if they were new applications, ignoring their true filing dates, thus allowing these long-pending applications to go to the bottom of examiners piles, for even more delay.
Most all examiners that I have dealt with have been very timely with examination of continuations.
They see the easy points (being more familiar with their interactions on the parent).
Most all examiners that I have dealt with have been very timely with examination of continuations.
I would concur that this happens in the majority of instances in which I am aware — and my clients have filed a lot of continuations in the past.
This seems like an argument for doing away with ODP as a category of rejection in continuations. Do you mean for this argument to apply even when one is talking about an ODP rejection in a later-filed application?
One can file a terminal disclaimer in an issued patent.
The problem here is that a later-filed and later-issued patent became a reference because it was not entitled to PTA. This situation arose because of Gilead — one looks to the expiration date not the issuance date to determine whether it is an ODP reference. The CAFC needs to undue Gilead.
From the NYIPLA brief:
“Under Cellect it is possible for a patent having PTA to
become invalid after issuance, such as in instances where
a later-fled application in the same family issues with no
PTA, thus creating a double patenting reference where
none existed before. E.g., Cellect, 81 F.4th at 1229 (‘369
patent issued 7/23/02 with 45-day PTA invalid over ‘036
patent issued 3/1/05 without PTA). This creates a new
burden: reconsidering already-issued patent portfolios,
lest ODP destroy valuable patent families. Hence, under
Cellect patentees must continuously monitor the need for
terminal disclaimers for the entire lifetime of each patent.
It forces the patentee to be responsible for delays caused
exclusively by the PTO. “
Does that really matter? The PTO is increasingly rejecting claims on the basis of OTDP trapping the applicant in a situation where they have to comment on the scope of the claim or immediately cutoff whatever term adjustment they could get. Getting into an actual litigation is also not the end all be all for patents. Just the possibility that a litigation could occur keeps competitors from launching potentially infringing products. But we don’t know how often this happens.