Federal Circuit IP

In Re: Cellect, LLC

By John Schmitz Published October 23, 2023

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.

Facts/Procedural Posture:

  • 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.