Federal Circuit IP
In Re: Cellect, LLC
CAFC Opinion No. 2022-1293-1296, Decided August 28, 2023
(Lourie, Dyk, Reyna)
Overview: Obviousness-type double patenting (“ODP”) is based on Patent Term Adjustment (“PTA”) adjusted expiration date of patent.
- Cellect sued Samsung Electronics, Co. (“Samsung”) for infringement of challenged patents in U.S. District Court for the District of Colorado.
- Samsung requested ex parte reexamination, asserting that patents were unpatentable based on ODP.
- In each reexamination the examiner determined that challenged claims were obvious variants of Cellect’s prior-expiring reference patent claims. Cellect appealed to the Board and the Board sustained the examiner’s determinations.
- Cellect appealed.
Issue on Appeal: Did PTAB err in its holding that any ODP analysis or determination, whether or not a terminal disclaimer is required, should be based on the adjusted expiration date of the patent?
Holding: No, PTA and PTE should be treated differently from each other when determining whether or not claims are unpatentable under ODP.
Fed. Cir. Analysis:
- PTA and PTE should not be factored into an ODP analysis in the same manner merely because they both provide statutorily authorized time extensions.
- ODP determination depends on PTA-adjusted expiration date.
- Proper inquiry is whether the claims of a later-expiring patent would have been obvious over the claims of an earlier expiring patent.
- For Patent Challengers: any earlier-expiring family member patent (even later-filed ones) can be used to (1) knock PTA off active patent; or (2) kill patent.
For Patent Owners: consider filing terminal disclaimers in a reexamination.