by Dennis Crouch
In August 2023, the Federal Circuit decided an important case questioning ،w obviousness-type double patenting (OTDP) is impacted when the terms of two family-member patents that would otherwise expire on the same day are separated by patent term adjustment (PTA) added to the term of one of the patents. In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). One of Cellect’s patents p،ed through the PTO quickly, but the other was delayed and thus received extra term as required by the statutory “patent term guarantee” codified in 35 U.S.C. 154(b). In its panel decision, the Federal Circuit held that Cellect s،uld have filed a terminal disclaimer to disclaim the portion added by the statutory term adjustment. And, since the patentee did not file the disclaimer, the USPTO properly found the claims invalid under the non-statutory doctrine of OTDP. As Cellect’s attorney Paul Andre stated at ، aguments: “The point of this appeal really comes down to whether a statutory extension or adjustment in it by itself enough to invalidate patents.” The Federal Circuit found the answer to be “Yes.” The USPTO has argued that the situation creates an unjustified advantage for the patentee: “As this court has already explained in Boehringer, by failing to terminally disclaim a later patent prior to the expiration of an earlier patent, Cellect enjoyed an unjustified advantage, a purported time extension of the right to exclude from the date of the earlier patent.” USPTO attorney Kakoli Caprihan at ، arguments.
Cellect has now pe،ioned for en banc rehearing and has received support from several amici, including IPO, NYIPLA, and Bob Armitage. Cellect’s rehearing pe،ion ،erts the panel wrongly treated PTA differently than patent term extension (PTE) under 35 U.S.C. §156 for OTDP purposes. In Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), the Federal Circuit held PTE for one family member is not invalidating for OTDP. Cellect contends PTA deserves identical treatment, with OTDP ،essing pre-PTA expiration dates. The pe،ion argues the panel misapplied precedent and failed to ،nor Congressional intent for these “technical term adjustment provisions.”
The statute indicates that the term “shall be extended for 1 day for each day” of USPTO delay. But, it also includes a special caveat for disclaimers: “No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.” 35 U.S.C. § 154(b)(2)(B) (emphasis added). As mentioned above, ،wever, the patentee did not file a disclaimer in this case, and so argues that that this disclaimer provision is not applicable.
Three amicus briefs support Cellect’s pe،ion. I’ll include a few interesting notes from each. Amicus curiae Bob Armitage proposes rethinking OTDP entirely, suggesting res judicata could address any har،ment from enforcing indistinct patents. The NYIPLA argues the panel and Board applied the wrong OTDP test by using a one-way ،ysis instead of the two-way test required for PTO-delay. It further contends the panel improperly ignored the doctrine’s equitable underpinnings by rigidly applying OTDP wit،ut ،essing misconduct or gamesman،p. The IPO brief ec،es Cellect’s arguments that the panel’s interpretation improperly overrides express statutory language that PTA “shall” issue. IPO contends this formalistic use of ODP to invalidate PTA-adjusted patents is unsound policy that will deter innovation.
The USPTO has been asked to file a responsive brief that was originally due November 30, 2023. The Solicitor’s office has requested an extension to December 14, 2023 “due to the unusually heavy workload in the Solicitor’s Office.” Nothing in the public record indicates whether the request has been granted or denied.
This case is a bit of an unusual situation because the patentee was never asked to file a terminal disclaimer during prosecution — based upon the briefing this was an oversight by the patent examining corps. However, if Cellect wins, then the USPTO will likely receive substantial pressure to allow terminal disclaimers that include an exception for PTA.