by Dennis Crouch
A second amicus brief has been filed – this one from the Intellectual Property Owners Association (IPO) – encouraging the Supreme Court to grant certiorari in Cellect, LLC v. Vidal, No. 23-1231. The case concerns 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). IPO-Final-Brief-Cellect-v-Vidal
As I previously discussed in my Cellect or Reject article, Cellect owns several patents related to image sensor technology. Although the patents claim priority to the same 1997 application, three of them received PTA due to USPTO delays, resulting in staggered expiration dates. No terminal disclaimer was filed during examination. But, during reexamination, the USPTO found the claims in the various patents were too close and them for ODP. Because the earlier patent had already expired, Cellect could not correct with a terminal disclaimer, and did not want to do so anyway because that would have waived its patent term adjustment. On appeal, the Federal Circuit affirmed the cancellation on ODP grounds – holding that the patentee had improperly extended its patent term via PTA. The court wrote that “the expiration date used for an ODP analysis . . . is the expiration date after the PTA has been added.”
In May 2025, Cellect petitioned to SCOTUS, arguing that the Federal Circuit’s decision violates the plain text of § 154(b), which states that a patent’s term “shall be extended” if certain PTO delays occur. The key question, as framed in the petition, is: “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 [the] judge-made patent invalidation doctrine” known as Obviousness Type Double Patenting (ODP).
IPO’s Arguments
IPO is a trade association whose primary leaders are in-house counsel from IP-focused companies, especially those with a patent-focus. This is different from other US-based IP orgs such as AIPLA and the ABA IP Section whose leaders are typically law firm attorneys. Although it has a diversity of membership, the organization tends to be strongly pro-patent, although particularly focusing on ways that patent rights benefit corporate owners rather than employee-inventors, individual inventors, or start-ups.
In its amicus brief supporting certiorari, IPO contends that the Federal Circuit erred by focusing its analysis on judge-made ODP doctrine rather than the statutory language. The brief states: “IPO believes that the Federal Circuit should have started (and ended) its analysis with the statute.” It argues that if the court had properly focused on the text of § 154(b), it would have concluded that Cellect was entitled to the PTA it received, absent any terminal disclaimer.
IPO emphasizes that “[p]atent owners are entitled to the entire patent term authorized by Congress, not a day less.” It warns that if the Federal Circuit’s decision stands, valuable patent rights will be unfairly invalidated or have their statutorily-authorized terms reduced, disincentivizing investment in innovation. The brief here was filed by my former boss Paul Berghoff and also signed by John Cheek, who is in-house counsel for auto supplier Tenneco.
Uncertainty and Confusion
IPO contends that the Federal Circuit’s decision has already caused unnecessary confusion in the lower courts. The brief cites conflicting interpretations by judges in the District of Delaware in cases with similar fact patterns. Compare Allergan USA, Inc. v. MSN Labs. Priv. Ltd., 2023 U.S. Dist. LEXIS 172641 (D. Del. 2023) (holding ODP applies because Cellect offered “no exception to the rule it announced”) with Acadia Pharms. Inc. v. Aurobindo Pharma Ltd., 2023 U.S. Dist. LEXIS 221663 (D. Del. 2023) (holding ODP does not apply in similar situation to that of Allergan).
The association also warns that the decision introduces uncertainty and instability into continuation application practice under 35 U.S.C. § 120. It argues that the ruling risks retroactive invalidation of many otherwise valid patents and upends the settled expectations of the patent community.
As I noted in my earlier post on the NYIPLA Brief, the case has potential widespread impact because a substantial percentage of U.S. patents are both (1) part of a larger patent family that (2) received differential PTA. In the background, while many have argued for weakening of the ODP regime based upon changes in the patent system that reduce the potential for bad-behavior. At the same time, the USPTO is looking to strengthen the power of ODP through enhanced terminal disclaimer requirements.
On motion from the US Solicitor General, the USPTO was granted a one month reprieve in filing its brief that is now due July 22, 2024.
IPO took on one aspect of the case — that judge made doctrine should not overwhelm the statutory law. The brief avoids the second issue that I find more interesting — what are the correct equitable principles for applying ODP to eliminate patent rights. In the question presented above, Cellect notes the patentee’s “good faith,” which is the antithesis of the bad-faith consideration that so often undergirds equity.
Dennis writes: “The [IPO] brief avoids the second issue that I find more interesting — what are the correct equitable principles for applying ODP to eliminate patent rights. In the question presented above, Cellect notes the patentee’s ‘good faith,’ which is the antithesis of the bad-faith consideration that so often undergirds equity” (my emphasis).
This observation profoundly misrepresents the Question Presented as addressing “equitable principles.” IPO’s brief “avoided” nothing; while the equitable principles that should govern the application of ODP can be debated elsewhere, those are entirely irrelevant in this case—a case with absolutely no room for any tribunal to exercise equitable powers in interpreting the PTA statute.
The U.S. Supreme Court explained that equitable judgement “is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.” SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954, 961 (2017). Thus, where Congress has filled the gap by specifying in a statute how and when rights may be exercised, applying equitable remedies “would give judges a ‘legislation overriding’ role that is beyond the Judiciary’s power.” Id. at 960. Moreover, that is so notwithstanding that “the lack of [equitable] defense could produce policy outcomes judges deem undesirable,” Id. at 961 n.4 (cleaned up).
The plain text of the PTA statute is unequivocal and mandates that if the Patent Office fails to meet statutory deadlines during examination, the “term of the patent shall be extended for 1 day for each day” of the delay. 35 U.S.C. §154(b)(1)(A)(iv) (my emphasis). Congress’s intent to guarantee such result is clear—subsection 154(b)(1) is itself entitled “Patent term guarantees,” and the subsection uses the term “guarantee” or “guarantees” four separate times.
There is absolutely no gap to fill in the PTA statute; and no equitable considerations for applying ODP, or for any other purpose, have any room in answering the Question Presented. The Federal Circuit panel was simply wrong. It is my hope that SCOTUS will recognize the contravention of the Constitution’s separation of powers principle in this case and grant cert.
all probably tru, and furthermore, ODP would seemingly need to be applied on a case by case basis, rather than as a blanket across all instances (as all equitable remedies should be btw although we’ve gotten far away from that).
“In May 2025, Cellect petitioned to SCOTUS…”
Does Cellect have a time machine?
Re: “The [IPO] brief avoids the second issue that I find more interesting — what are the correct equitable principles for applying ODP to eliminate patent rights. ”
Is it possible they, or the Sup. Ct., might consider judicial [obviousness-type] type ODP to be issues of the proper judical and/or administrative agency breadth of interpretation of the 101 statute, in the context of the judicial interpretation of the Patent Term Adjustment (PTA) statute’s 35 U.S.C. § 154(b), rather than an equitable issue?