Federal Circuit:
Term adjustments will apply
To obviousness

The Federal Circuit has ruled that when members of a patent family have different expiration dates due to patent term adjustments (PTAs), the earlier-expiring patent family members can be used as a basis for an Obviousness-Type Double Patenting (ODP) invalidity challenge against the later-expiring family members.

The case is In re Cellect, LLC (Fed. Cir. Aug. 28, 2023).

Cellect appealed from four ex parte reexamination decisions of the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or “the Board”) affirming the unpatentability of certain claims of its patents for ODP.

ODP prohibits issuance of claims in a second patent on an invention essentially the same as that claimed in a first-issued patent.

The patents at issue are directed to devices (e.g., personal digital assistant devices or phones) comprising image sensors. The challenged patents are all interrelated, each claiming priority from a single application that issued as U.S. Patent 6,275,255

Each of the challenged patents was granted Patent Term Adjustment (PTA) for USPTO delay during prosecution pursuant to pre-AIA 35 U.S.C. § 154(b).

Because each family member patent claims priority from the same application, each would have expired on the same day but for the individual grants of PTA.

Cellect sued Samsung for infringement of the challenged patents. Samsung requested the 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 PTAB, noting that ODP does not invalidate a validly obtained Patent Term Extension (PTE) under 35 U.S.C. § 156.

As the court noted,

Cellect further argued that an ODP rejection is not proper under the equitable principles underlying ODP, including (1) preventing the receipt of an improper timewise extension of a patent term, and (2) preventing split ownership of related patents and subsequent potential harassment by multiple owners or assignees.

However, the Board sustained the examiner’s determinations that the asserted claims of the challenged patents were unpatentable under ODP.

As the court noted,

The Board also found that Cellect received an unjustified timewise extension of patent term for the asserted claims of the challenged patents and that a risk of dividedownership, and subsequent harassment by multiple assignees, remained active.

The court agreed 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.

Before this ruling, there was a grey area and a split between courts with respect to whether ODP applied when the expiration date of two patents differed solely due to a PTA.

The result of this ruling is that patent owners are now more vulnerable to attacks based on ODP when the expiration dates of the patents at issue have been adjusted by PTA.

This ruling also affects the strategic decision of when to terminally disclaim a patent challenged on ODP grounds.

As the USPTO notes,

A terminal disclaimer is a statement in which a patentee or applicant disclaims or dedicates to the public the entire term or any terminal part of the term of a patent or patent to be granted (filed in an application).

Filing a terminal disclaimer allows a patent owner to patent small changes to an invention without prohibited double-patenting.

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