Argument Preview

As we previously mentioned, four cases being argued in June at the Federal Circuit attracted amicus briefs, and two of those cases are appeals from ex parte reexaminations involving the same appellant, Cellect, LLC. In In re Cellect, LLC (“Cellect II”), the Federal Circuit will review a judgment by the Patent Trial and Appeal Board invalidating Cellect’s patents under the doctrine of obviousness-type double patenting. This is our argument preview.

In its opening brief, Cellect argues “the judicially created doctrine of obviousness-type double patenting simply does not apply to Cellect’s Challenged Patents, because they are related and would have expired on the same day but for receiving [Patent Term Adjustments] pursuant to 35 U.S.C. § 154(b).” Furthermore, Cellect contends, “[d]ouble patenting exists to prevent two equitable considerations, neither of which are present here: an unjust timewise extension of patent term through manipulative prosecution, and harassing litigation filed by multiple patent owners that split multiple patents for the same invention between them.” Moreover, it maintains, “no substantial new question of patentability exists in this case that could justify reexamination of Cellect’s related patents.” As a whole, Cellect asserts, “the Board’s Decisions deploy an equitable doctrine to achieve an inequitable result—namely, to punish Cellect for its indisputably proper, statutorily granted term adjustment.”

In its response brief, the Patent and Trademark Office argues “Cellect does not dispute that the challenged patents and reference patents are commonly owned, that the challenged patents expired after the reference patents, and that all of the challenged claims are patentably indistinct over claims in the reference patents.” As a result, the government contends, “the Board correctly determined that Cellect’s claims in the challenged patents are unpatentable under [obviousness-type double patenting] over the claims in the cited reference patents.” It argues “the Board correctly found” that the Federal Circuit “has explained on repeated occasions that patents claiming overlapping subject matter, that have different patent terms due to [patent term adjustment], give rise to issues” of obviousness-type double patenting. In short, the government contends, “PTA can be limited when a terminal disclaimer is necessary to overcome an ODP issue, and . . . ODP should apply here.” The government clarifies that “ODP . . . applies to diminish the risk of future harassment from multiple assignees, and . . . the doctrine can be applicable to patents where there is no actual timewise extension of the right to exclude.” Finally, the PTO maintains “there is no evidence the [PTO] ever considered and decided ODP during the original prosecution of the applications that matured into the challenged patents, and therefore the reexamination was properly instituted as to each proceeding.”

In its reply brief, Cellect argues that “the Patent Office relie[d] on case law inapposite to this case, while improperly dismissing the sound reasoning of two jurists who considered this exact issue.” It further contends that, “because the Patents at Issue are related and only expire on different dates due to statutorily-mandated [patent-term adjustments], it is nonsensical to state, as the Patent Office does, that Cellect sought or obtained an unjust timewise extension.” It also highlights how “the Patent Office does not dispute any of the facts that demonstrate [the examiner] considered potential double patenting issues during prosecution of the Challenged Patents—including issuing a double patenting rejection when warranted for a different application in the same family.”

Six amicus briefs were filed in this case. Three support reversal:

  • The Pharmaceutical Research and Manufacturers of America (PhRMA) filed an amicus brief in support of reversal. The brief takes issue with the fact that, “under the Board’s test, . . . the mere difference in term is reason enough to invalidate a patent—whether that difference in term was justified or even statutorily-mandated becomes irrelevant.” The brief also contends “the judge-made doctrine of obviousness-type double patenting cannot cut short a statutorily mandated term extension.” Lastly, the brief asserts “the Board is ill-equipped to address in the abstract the equities associated with concrete separate enforcement concerns, which by definition arise after patent issuance in the context of concrete infringement disputes.”
  • The Intellectual Property Owners Association filed an amicus brief in support of neither party but urging reversal. The brief first notes how “all four rejected Cellect patents were invalidated because of Patent Office delays during the original examination period,” which it claims is the “exact opposite of the result Congress intended” when it enacted the relevant statute. The brief further contends “Patent Office delay should add to the term of the patent whose examination was delayed, not invalidate it, essentially reducing its term to zero.”
  • The Biotechnology Innovation Organization also filed an amicus brief in support of the appellant. The brief maintains the Board “has improperly applied the doctrine of obviousness-type double patenting . . . to invalidate patents whose expiry dates differ solely due to [patent-term adjustments] granted under § 154.” The brief further contends that, “applying [obviousness-type double patenting] in a way that obviates the [patent-term adjustment] awarded for delays in USPTO examination, as the [Board] did here, would, in many cases, result in patent terms shorter than 17 years, flouting the very purpose of § 154.”

Three other amicus briefs support the PTO:

  • Alvogen PB Research & Development LLC filed an amicus brief in support of the Director and affirmance. The brief argues “the Board’s position follows the Court’s precedent” and “aligns with the three historical principles that justify the [obviousness-type double patenting] prohibition—i.e., unlawful extension, non-alienation, and exhaustion.”
  • The Association for Accessible Medicines also filed an amicus brief in support of the Director and affirmance. The brief contends the Board “correctly observed that patent-term adjustments (“PTA”) . . . can result in different patent expiration dates for multiple patents reciting obvious variants of the same invention.” The brief argues “the Board properly held that [obviousness-type double patenting] supported invalidating obvious variants of already-issued patents.”
  • Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. also filed an amicus brief in support of the Director and affirmance. The brief contends “Cellect’s arguments . . . distort the applicable statutes, their legislative history, and this Court’s prior holdings.” According to their brief, “Cellect never filed terminal disclaimers and cannot do so now after the reference patents have expired, because Cellect has already obtained the unwarranted benefit.”

This case will be argued (back to back with its companion case) on Friday, June 9. We will report on any developments.