In In re Cellect, LLC, the Federal Circuit held that obviousness-type double patenting (“ODP”) for a patent that has received a patent term adjustment (PTA), whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added. 81 F.4th 1216 (Fed. Cir. 2023).
Cellect owns four patents, U.S. Patent Nos. 6,982,742, 6,424,369, 6,452,626 and 7,002,621 (“the challenged patents”). The challenged patents all claim earliest priority to US Patent 6,275,255, filed October 6, 1997. Each would have expired on the same day, October 6, 2017, but for the individual grants of PTA in all four challenged patents.
Cellect sued Samsung Electronics, Co. (“Samsung”) in the district court for infringement of the challenged patents. Samsung then requested ex parte reexaminations of several claims of each of the challenged patents on the grounds of ODP, which was not raised during original prosecution. The reexamination examiner rejected those four challenged patents for being invalid due to ODP over a reference patent (US Patent 6,862,036 – “the ’036 patent”), which was the single family member that did not receive a grant of PTA and expired on October 6, 2017. Thus, but for the PTA, the five patents would have expired the same day. Each of the four patents in reexamination were found unpatentable over each other or the ’036 patent. All the invalidated claims ultimately traced back to the ’036 patent.
All of Cellect’s patents had expired by the date Samsung requested ex parte reexaminations. Accordingly, Cellect did not have the option to file terminal disclaimers during reexamination to overcome the ODP rejections, as any terminal disclaimer must be filed prior to expiration of the relevant reference patent(s).
Cellect appealed the ODP rejections to the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“the Board”), relying on the Federal Circuit’s decision in Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), holding that ODP cannot invalidate a statutory grant of Patent Term Extension (PTE), and arguing that, similarly, ODP cannot be used to invalidate a statutory grant of PTA. The Board sustained the examiner’s determinations of unpatentability under ODP, and Cellect appealed to the Federal Circuit.
On appeal to the Federal Circuit, Cellect argued that, in determining unpatentability for ODP, the Board should have used the expiration date of the patents before any PTA was added, as is done for PTE pursuant to 35 U.S.C. § 156. Cellect argued that under Novartis, a judicial-made doctrine (i.e., ODP) cannot cut off a statutory grant of an extension of patent term, and since both PTA and PTE are authorized under statute, ODP cannot be used to terminate PTA.
The Federal Circuit concluded that the language in PTA and PTE statutes indicate that PTA and PTE should be treated differently in an ODP analysis. A notable difference is that the PTA statute (§ 154) mentions terminal disclaimers, whereas the PTE statute (§ 156) does not. The PTA statute is clear that a grant of PTA may be limited by the application of a terminal disclaimer, in contrast to the absence of terminal disclaimers in the PTE statute. The difference between these statutes indicates the legislative intent to treat PTA and PTE differently. The Federal Circuit affirmed the Board’s decision, holding that when analyzing whether claims are unpatentable based on ODP, the expiration date for a patent having PTE is determined from the original expiration date (including application of any terminal disclaimer) before PTE has been added, whereas for PTA, the expiration date for ODP analysis is calculated after the addition of any granted PTA (i.e., the adjusted expiration date) regardless of whether a terminal disclaimer has been filed. The court rejected Cellect’s argument that PTA should be treated in an ODP analysis like PTE as “an unjustified attempt to force disparate statutes into one.”
The Federal Circuit also noted that Cellect should have filed a terminal disclaimer for all the patents that had received PTA to disclaim the portion added by the statutory term adjustment. In the presence of ODP, the extended patent term granted through PTA should be eliminated by a terminal disclaimer. Because the earliest expiring patents had all expired by the time of the appeal, however, terminal disclaimers could no longer be used to avoid a finding of invalidity. Moreover, the court held that filing terminal disclaimers would have avoided the risk of split patent ownership of the same invention that obviousness-type double patenting was meant to prevent. The Federal Circuit thus affirmed the Board’s finding of invalidity.
Cellect filed a petition for rehearing en banc, and the Federal Circuit invited a response by the USPTO, which filed a response along with a number of other amici briefs, but the petition was denied in January 2024. In May 2024, Cellect filed a petition for certiorari with the Supreme Court of the United States.