The NYIPLA Brief: Advocating for Patent Term Adjustments

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.