In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023)
In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit addressed whether related patents can be invalidated for double patenting when they expire on different dates due to patent office delays. The Federal Circuit held that such related patents can be invalidated, raising the prospect of an increase in such validity challenges going forward.
Appellant Cellect’s four challenged patents at issue are directed to electronic devices with imaging sensors, and each claimed priority from a single application. The challenged patents were granted Patent Term Adjustments (“PTA”) by the U.S. Patent and Trademark Office (“USPTO”) because of delays in prosecution. A PTA lengthens the term of a patent to account for delays on USPTO’s part in the processing of applications. Because each related patent claimed priority from the same application, each would have expired on the same day but for the individual PTA grants.
Cellect sued Samsung for infringement of the challenged patents. In response, Samsung requested ex parte reexaminations, asserting that the patents were unpatentable based on obviousness-type double patenting (“ODP”). In each reexamination proceeding, the examiner determined that the challenged claims were obvious variants of Cellect’s prior-expiring reference patent claims. Cellect appealed to the PTAB, arguing 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. Cellect further argued that an ODP rejection is not proper under the equitable principles underlying ODP. The PTAB sustained the examiner’s determination.
Cellect raised three challenges on appeal. First, Cellect contended that the PTAB erred in determining that whether or not a patent is unpatentable for ODP is determined based on the date of expiration of a patent that includes any duly granted PTA pursuant to 35 U.S.C. § 154. Second, Cellect contended that the PTAB erred in failing to consider the equitable concerns underlying the finding of ODP in the ex parte reexamination proceedings. Third, Cellect contended that the PTAB erred in finding a substantial new question of patentability in the underlying ex parte reexaminations, and thus that the reexamination proceedings were improper.
The Federal Circuit rejected Cellect’s challenge to the PTAB’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 pursuant to 35 U.S.C. § 154. The Federal Circuit found Cellect’s argument that PTA and PTE should be treated similarly unpersuasive. According to the Court, PTA and PTE are dealt with in different statutes and deal with differing circumstances. So to find that PTA and PTE should be factored into an ODP analysis in the same manner merely because they both provide statutorily authorized time extensions that restore patent term due to various administrative delays, as Cellect argues, would force disparate statutes into one. Instead, the Court found that the statutes have distinct purposes, requiring distinct analysis. In so finding, the Federal Circuit rejected the argument that any statutorily mandated extension, including PTA and PTE, cannot be cut short by a judge-made doctrine like ODP. Reviewing the purpose behind the PTA statute, the Court found there to be nothing in the PTA statute to suggest that application of ODP to the PTA-extended patent term would be contrary to the congressional design. Indeed, the Court found that Cellect’s interpretation of the PTA statue would have the improper result of effectively extending the overall patent term awarded to a single invention contrary to Congress’s purpose by allowing patents subject to PTA to have a longer term than the reference patent.
The Federal Circuit also rejected Cellect’s equitable arguments. The Court found that neither party disputed that the asserted claims in the challenged patents would have been obvious variations of the respective claims in the invalidating ODP. As such, the Court found that public policy instructed that Cellect should not receive an unjustified extension of its patent terms no matter how the unjustified extension was obtained, and that Cellect’s good faith was irrelevant. The Court also found that a risk of separate ownership existed. The Court reasoned that while Cellect had not engaged in actions that resulted in divided ownership in the past, and it has promised that it would not do so in the future, neither fact sufficed to abrogate the potential future risk of multiple owners or assignees.
Finally, the Federal Circuit rejected Cellect’s challenge to the PTAB’s determination that the ex parte reexamination proceedings raised a substantial new question of patentability. The Court found Cellect’s arguments on this point to entirely lack merit.
The opinion can be found here.
By Mario E. Delegato
ALSO THIS WEEK
Sisvel Int’l S.A. v. Sierra Wireless, Inc., Appeal Nos. 2022-1387, -1492 (Fed. Cir. Sept. 1, 2023)
In an appeal from a PTAB final written decision that certain claims of two patents were unpatentable as anticipated and/or obvious, the Federal Circuit affirmed. The patents concern the exchange of frequency information in connection with cell reselection between a mobile station (or user cell phone) and a central mobile switching center. At issue was the claim term “connection rejection message.” The PTAB held that the term had its plain and ordinary meaning: “a message that rejects a connection.” Sisvel, the patent owner, had advocated for a narrower construction limited to Global System for Mobile Communication (“GSM”) or Universal Mobile Telecommunication System (“UMTS”) network messages. The Federal Circuit agreed that the term was not so limited because “the intrinsic evidence provides no persuasive basis to limit the claims to any particular cellular networks.” While the specification expressly disclosed UMTS and GSM networks, it also broadly taught that the invention would be applicable in other networks. It was uncontested that, based on this construction, the claims were invalid. Thus, the Federal Circuit affirmed the invalidity finding.
The Court also affirmed the PTAB’s decision denying a motion to amend the claims. The Board found that Sisvel’s proposed amendments would have impermissibly broadened the claim scope in violation of the applicable regulations. The Court reinforced that claim scope is broader “if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” The Court agreed with the Board that Sisvel’s proposed claim was broader in scope than the original claim, and thus affirmed denial of Sisvel’s motion to amend.
The opinion can be found here.
By Nika Aldrich