In re Cellect, LLC

22-1293, 22-1294, 22-1295, 22-1296

Issue(s) Presented

1. “Whether patent term adjustments should be treated in the same way as patent term extensions for purposes of non-statutory obviousness-type double patenting.”

2. “Whether a patent can become a basis for double patenting against another related patent, when the only reason that the two related patents expire at different times was due to a statutorily granted patent term adjustment.”

3. “Whether the Board erred in finding that double patenting raised a substantial new question of patentability during reexamination when the evidence demonstrates that the Patent Office considered double patenting during prosecution and knew about the term adjustments during prosecution.”


1.  “[W]e agree with the USPTO that PTA and PTE should be treated differently from each other when determining whether or not claims are unpatentable under ODP. PTA and PTE are dealt with in different statutes and deal with differing circumstances. We conclude that, while the expiration date used for an ODP analysis where a patent has received PTE is the expiration date before the PTE has been added, the expiration date used for an ODP analysis where a patent has received PTA is the expiration date after the PTA has been added.”

2. “We agree with the USPTO that the Board did not err in determining that Cellect received unjustified extensions of patent term. Neither 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. The obviousness of the asserted claims in each of the challenged patents can be traced back to the ’036 patent. That is the only patent in the family that did not receive a grant of PTA. . . . Therefore, any extension past that date constitutes an inappropriate timewise extension for the asserted claims of the challenged patent.”

3. “We agree with the USPTO that the Board’s determination that the reexamination requests raised a substantial new question of patentability was supported by substantial evidence. Cellect’s arguments lack merit and amount to little more than attempting to prove a negative.”