On Monday, the Federal circuit issued its opinion in In re Cellect, LLC, a patent case we have been following because it attracted amicus briefs. In this case, the Federal Circuit reviewed a judgment of the Patent Trial and Appeal Board invalidating Cellect’s patents under the doctrine of obviousness-type double patenting. In an opinion by Judge Lourie joined by Judges Dyk and Reyna, the Federal Circuit agreed with the Patent Trial and Appeal Board. In particular, the court held that “ODP for a patent that has received [Patent Term Adjustment], regardless 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.” This is our opinion summary.
Judge Lourie began by highlighting the factual and procedural background of the case:
Cellect sued Samsung Electronics, Co. (“Samsung”) for infringement of the challenged patents in the United States District Court for the District of Colorado. Samsung then requested the underlying ex parte reexaminations, asserting that the patents were unpatentable based on ODP, which was not raised by the examiner during prosecution. In each reexamination proceeding, the examiner issued a Final Office Action determining that the challenged claims were obvious variants of Cellect’s prior-expiring reference patent claims. . . . Cellect appealed the rejection of the claims of the challenged patents to the Board. Cellect noted that under Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), ODP does not invalidate a validly obtained Patent Term Extension (“PTE”) under 35 U.S.C. § 156, and argued that the Board should similarly hold that ODP cannot negate a statutory grant of PTA [Patent Term Adjustment]. That is, Cellect argued that determining unpatentability under ODP should be based on the expiration dates of the patents before any PTA is added to the term. . . . In each of the four appeals from ex parte reexamination, the Board sustained the examiner’s determinations that the asserted claims of the challenged patents were unpatentable under ODP. . . . Based on those findings and reasoning, the Board held that both ODP and terminal disclaimers should be considered after any PTA. J.A. 38. That is, any ODP analysis or determination, whether or not a terminal disclaimer is required, should be based on the adjusted expiration date of the patent. The Board further found that the asserted claims would have been obvious in view of the respective invalidating ODP references and noted that Cellect did not dispute that fact. J.A. 43. . . . The Board sustained the finding of unpatentability of the claims under ODP, and Cellect appealed.
Judge Lourie then reviewed the Patent Trial and Appeal Board’s judgment invalidating Cellect’s patents under the doctrine of obviousness-type double patenting.
He first considered “Cellect’s challenge to the Board’s determination that the unpatentability of claims under ODP must be based on the date of expiration of a patent that includes any duly granted PTA.” Judge Lourie “agree[d] with the USPTO that PTA and PTE should be treated differently from each other when determining whether or not claims are unpatentable under ODP.” He explained that “PTA and PTE are dealt with in different statutes and deal with differing circumstances.” As a result, “the expiration date used for an ODP analysis where a patent has received PTA is the expiration date after the PTA has been added.” Addressing Cellect’s argument that “PTA and PTE should be factored into an ODP analysis in the same manner . . . because they both provide statutorily authorized time extensions that restore patent term due to various administrative delays,” Judge Lourie explained that the argument is “an unjustified attempt to force disparate statutes into one.” He emphasized that the court’s “case precedent has clearly delineated how a patent that has received PTE, a statutorily authorized extension, interacts with ODP, a doctrine that limits the term of a patent or, at least, ties later-filed, commonly owned, obvious variations to the expiration date of an earlier-filed reference patent.” But “ODP for a patent that has received PTA, regardless 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.” As a result, the “Board did not err in finding the asserted claims unpatentable under ODP.”
Next, Judge Lourie considered “Cellect’s challenge to the Board’s determination that equitable concerns underlying ODP, including an improper timewise extension of a patent term and potential harassment by multiple assignees, are present in this case.” Judge Lourie agreed with “the USPTO that the Board did not err in determining that Cellect received unjustified extensions of patent term.” He highlighted how “[n]either Cellect nor the USPTO disputes that the asserted claims in the challenged patents would have been obvious variations of the respective claims in the invalidating ODP references.” Further, he noted, “obviousness of the asserted claims in each of the challenged patents can be traced back to” a single patent “[t]hat is the only patent in the family that did not receive a grant of PTA.” As a result, he concluded, “any extension past that date constitutes an inappropriate timewise extension for the asserted claims of the challenged patents.” He also agreed with the USPTO that “the Board did not err in determining that a risk of separate ownership existed and, even in the absence of separate ownership, that a terminal disclaimer would have been required to ensure common ownership.” Ultimately, he concluded, “[a]n applicant’s ability to show that it did not engage in gamesmanship in obtaining a grant of PTA is not sufficient to overcome a finding that it has received an unjust timewise extension of term.”
Judge Lourie then turned to the final challenge put forth by Cellect, “to the Board’s determination that the ex parte reexamination proceedings raised a substantial new question of patentability.” In short, Judge Lourie agreed with “the Board’s determination that the reexamination requests raised a substantial new question of patentability.” He emphasized that “[a] substantial new question of patentability requires just that—a substantial new question.” And he found that, because “Cellect itself d[id] not indicate a single portion of the prosecution history explicitly showing that the examiner considered ODP, the threshold for showing a substantial new question has been met.”
Judge Lourie, moreover, agreed with “the USPTO that the question of invalidation of only the adjustment period raised by Cellect on appeal is forfeited, as it was not raised before the Board.” In this regard, he explained that a “terminal disclaimer is not an escape hatch to be deployed after a patent expires.” And so, despite Cellect’s opportunity to file a terminal disclaimer, he highlighted that “it declined to do so” and, as a result, concluded that “the challenged patents have expired, and the opportunity has passed.”
As a result of its analysis, the Federal Circuit affirmed the judgment of the Patent Trial and Appeal Board invalidating Cellect’s patents under the doctrine of obviousness-type double patenting.