Argument Recap

Earlier this month, the Federal Circuit heard oral argument in In re Cellect, LLC (“Cellect II”). In this case, the Federal Circuit is reviewing a judgment of the Patent Trial and Appeal Board invalidating Cellect’s patents under the doctrine of obviousness-type double patenting. Judges Lourie, Dyk, and Reyna heard the oral argument. This is our argument recap.

Paul J. Andre argued for Cellect. Early in his argument, one judge characterized Cellect’s position. This judge stated that what he understood Cellect to be saying is that, if a party has “two patents that are patently indistinct” and “one got a patent term adjustment and the other one did not,” then “the term of the patent with the patent term adjustment is not to be limited to the term of the patent that issued more promptly.” In response, Andre similarly contended that, by statute, the term of a patent does not get restricted by the double patenting doctrine.

Andre argued that “the language of the statute is very clear,” stating that “the term shall be adjusted one day every day that there is a delay.” He further asserted that “a judge-made doctrine should not cut short a statutory extension.” One judge, however, found a problem with Cellect’s argument, noting that a party “cannot have two patents on the same invention.” Andre responded to this concern by maintaining that, “in this particular instance, during [the] original examination, there were continuations filed and those continuations” are “different aspects of the invention.”

Andre then argued “the point of this appeal comes down to whether a statutory extension or adjustment is by itself enough to invalidate patents.” In response, one judge pointed out how “double patenting law is a long-term part of the law and when Congress enacted [patent term adjustments], it knew full well what the law of double patenting was, and it did not in any way override it.” According to Andre, however, Congress “did not override double patenting because that was not the point or intent of the statute.” He maintained “the statute was [meant] to compensate patentees for delays not of their own doing.”

Kakoli Caprihan argued for the Patent and Trademark Office. She highlighted that Cellect “does not dispute that its challenged claims on appeal are patently indistinct from its prior reference claims, that its challenged claims expired after its reference claims enjoyed their full patent term, and that [it] failed to file a terminal disclaimer tying the expiration date and ownership of the challenge claims and reference claims by not filing that terminal disclaimer before its first set of claims expired.” She further contended that Cellect “has triggered the very concerns that justify unpatentability under” obviousness-type double patenting. She explained that, “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.”

Caprihan asserted that obviousness-type double patenting applies here “because Cellect’s . . . later expiring claims . . . were not terminally disclaimed.” She maintained that, “even though there is no existing terminal disclaimer, once that [double patenting] rejection is made, should Cellect have wanted to obviate . . . the rejection, they could have filed a terminal disclaimer.” One judge then asked a rhetorical question: “we do not read in meanings beyond specific language [of statutes], do we?” Caprihan responded by noting that “Congress recognized that [double patenting] applied to determining” patentability, and therefore, “when Congress decided . . . that terminal disclaimers cut terms,” it “recognized that [obviousness-type double patenting] applies to determining whether or not a statutory term should issue.” A judge then remarked that “there is no indication that [Congress] intended to change double patenting, and the general rule is that it would continue because it is firmly rooted in Supreme Court doctrine.”

Caprihan summarized her argument by asserting “the only claims that are found to be unpatentable here are the challenged claims, and that is because they are patently indistinct and Cellect has already enjoyed the full term of that invention.” She then clarified that double patenting invalidates Cellect’s claims, not the patents themselves, which is why there is no equity problem in this case.

In rebuttal, Andre argued that, even if the court finds the patents are patently indistinct, “a statutory extension trumps” double patenting. He pointed to a provision in the relevant statute for terminal disclaimers that states “no patent, the term of which has been disclaimed beyond specific date” should “be adjusted under this section beyond the expiration date specified in the disclaimer.” He maintained that the “patent term adjustments that were given in this case should not be a basis for an unjust extension.”

We will continue monitoring this case and report on developments.