by Dennis Crouch
Most U.S. utility patents are (or will eventually be) part of a patent family with at least one other U.S. patent. The recent rise in focus on obviousness type double patenting (ODP) has been unnerving to some, especially with the Cellect decision from 2023 that seemed to greatly expand the risk of family members colliding based upon differing expiration dates due to Patent Term Adjustment (PTA).
The Federal Circuit’s new ODP opinion in Allergan USA v. MSN Labs, 24-1061 (Fed. Cir. August 13, 2014), provides some major relief to patent portfolio holders, holding that “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.” This ruling provides a measure of protection for first-filed patents that receive substantial PTA, shielding them from ODP challenges based on their own continuations sharing the same priority date.
The basic idea here is that the first patent in a family often takes longer to issue as the examiner goes through a series of rejections before he sufficiently understands the invention and the art (often the attorney and the client also struggle in these early stages to know what they are protecting). This delay means that the first-issued patent in a portfolio often has a longer patent term adjustment. Subsequent continuations tend to go through more quickly — especially when the patentee includes key limitations that have already been judge to differentiate the invention from the prior art. Under Allergan, this typical setup has some ODP safe harbor because a later filed+issued but earlier expiring patent cannot serve as a proper ODP reference to invalidate that earlier filed+issued but later expiring patent (having the same priority date).
This decision makes common sense. ODP is designed to protect against improper attempts to extend patent term by obtaining subsequent patents with sequentially later expiry dates. As the court writes:
To hold otherwise—that a first-filed, first-issued parent patent having duly received PTA can be invalidated by a later-filed, later-issued child patent with less, if any, PTA—would not only run afoul of the fundamental purposes of ODP, but effectively abrogate the benefit Congress intended to bestow on patentees when codifying PTA. That is because such a holding would require patent owners, in order to preserve the validity of the parent patent, to file a terminal disclaimer disclaiming any term of the parent that extends beyond that of the child, which, given that the patents share a priority date, would amount to the disclaimer of only PTA. That parent patent, then, would not receive the benefit of its congressionally guaranteed patent term, see 35 U.S.C. § 154(b), and would instead be limited to the, presumably shorter, term of its own child. Such a result would be untenable.
But, the outcome in Allergan was not predictable because, as I discuss below, Cellect appeared to provide an opposite holding.
This decision will likely shift basic patent portfolio strategy so that the initial issued patent has the longest patent term adjustment. This would typically mean fighting harder for broader claims in the initial patent rather than following the strategy of getting a quick ‘win’ with the initial patent. Of course, this is just one factor, and care will need to be taken to avoid other collisions — such as between the second and third issued patents. The USPTO has typically been requiring terminal disclaimers be filed in these cases for the later issued patent. That practice is still appropriate, but is largely meaningless because a premise of our fact situation is that the later issued patent is already the one that will expire first.
As alluded above, Allergan is in some major tension with In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). In Cellect, the Federal Circuit also faced a situation involving a later-expired claim being challenged as ODP based upon an earlier-expired but later-filed and later-issued patent. I.e., the same situation as in Allergan. In that case though, the court arrived at an opposite end-point — namely invalidity for double patenting.
The Allergan opinion explains away the tension with Cellect by noting that the issue was not properly raised: the “patent owner in Cellect did not challenge whether the reference claims used to invalidate the asserted claims were proper ODP reference claims.” It appears that the result here is that Allergan has relegated the Cellect holding to the simple rule that PTA is relevant to ODP.
Allergan also marks a departure from Gilead Sciences, Inc. v. Natco Pharma Ltd. (Fed. Cir. 2014), which emphasized expiration dates over issuance dates in ODP analysis. The Allergan court distinguished Gilead, noting that it involved patents with different priority dates, unlike the common priority date scenario in Allergan. Although this is a distinction, it is not entirely clear to me that it is sufficient to explain such a dramatic opposite outcome. But, I expect that patentees at least will not be inspecting the teeth of this gift horse. But attorneys should ensure that they consider this holding and the benefit of having common priority dates.
I’ll be returning to this case next week in more detail but I have a few additional notes:
- Cellect v. Vidal is still pending before the Supreme Court.
- A few weeks ago I wrote about the several hundred thousand patents potentially at risk under Cellect. The majority of that risk seems to have gone away with this new Allergan decision.
- Of some interest, both Cellect and Allergan were decided by the same three judge panel of Judges Lourie, Dyk, and Reyna, with Judge Lourie writing the opinion for both cases. There is no indication in the record of anything other than a random judicial assignment.
“They” => “That”
Autocorrect is odd.
Thankfully, logic prevailed.
Now about all those illogical and conflicting eligibility rulings . . .
Right, in particular the ridiculously illogical holding that prior art that anticipates all the structural features in a claim is treated as non-anticipating if it’s (LOL) “unconventional” (even when the prior art teaches that the utility of those features is in for information-processing).
Of course, when this “activist” CAFC-created mythology is inevitably wiped off the map for common sense reasons we will all have to endure the whining wailing from hypocritical know-nothing infants like you.
Well, what do you know. The ad hominem specialist and I actually agree on something . . . that the CAFC is an activist court.
This was probably a needed clarification of Cellect and seems to be the right conclusion.
Glad to see this important clarification. The whole issue could have been avoided, however, had this same panel properly thought through the issue during the Cellect decision. Sure, the question presented was different, but there’s little excuse for failing to think through the obvious consequences of essentially the same fact pattern. When the Court says “Cellect does not address … any variation of the question presented here” they are really saying “we didn’t think through the obvious consequences of our holding in Cellect in regard to this very common fact pattern.”
This is a significant clairification of prior confusing obvousness type double patenting decisions if this Allergan v. MSN Fed. Cir. decisision really does [without properly overruling any prior Fed. Cir. decisions?] hold that “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.” Protecting first-filed patents from ODP kills based on true continuations.
Not sure I understand this:
“Protecting first-filed patents from ODP kills based on true continuations.”
Can you restate?
Assuming was really a question, by a “true continuation” I simply meant one with the same specification truely entitled to the same priority date for the subject claims, not a CIP mislabled as a continuation.
BTW, what now happens when the continuation patent is a later-filed, later-issued, but LATER-expiring [due to PTA] OTPD-reference claim?
I may be confused. If the continuation expires later than the parent, then the parent’s claims can be used in an ODP rejection against the child’s.
Thanks – yes a true question (I would never think to label CIP’s as Continuations, so that avenue was not contemplated).
“ This decision will likely shift basic patent portfolio strategy so that the initial issued patent has the longest patent term adjustment. This would typically mean fighting harder for broader claims in the initial patent rather than following the strategy of getting a quick ‘win’ with the initial patent.”
This seems to be over-thinking things more than a little bit but, hey, knock yourselves out people. And definitely don’t use the term “invention” in the spec! Someone might think you are talking about an invention which could be limiting which would be awful except when it isn’t.
Your views certainly are intended to 1gn0re the reality of patent profanity for…
For…
Hmm, the only reasons that support this are all anti-patent, but you have asserted otherwise.
Why then do you express such views?
Not enough dressing in the world to brighten up your word salad, Billy.
They Accuse Others tactic of yours is as dull as ever.
See post 6.