The Fate of Patent Term Adjustment: In re Cellect Seeks Rehearing on Double Patenting

by Dennis Crouch

In August 2023, the Federal Circuit decided an important case questioning how obviousness-type double patenting (OTDP) is impacted when the terms of two family-member patents that would otherwise expire on the same day are separated by patent term adjustment (PTA) added to the term of one of the patents. In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). One of Cellect’s patents passed through the PTO quickly, but the other was delayed and thus received extra term as required by the statutory “patent term guarantee” codified in 35 U.S.C. 154(b). In its panel decision, the Federal Circuit held that Cellect should have filed a terminal disclaimer to disclaim the portion added by the statutory term adjustment. And, since the patentee did not file the disclaimer, the USPTO properly found the claims invalid under the non-statutory doctrine of OTDP. As Cellect’s attorney Paul Andre stated at oral aguments: “The point of this appeal really comes down to whether a statutory extension or adjustment in it by itself enough to invalidate patents.” The Federal Circuit found the answer to be “Yes.” The USPTO has argued that the situation creates an unjustified advantage for the patentee: “As this court has already explained in Boehringer, by failing to terminally disclaim a later patent prior to the expiration of an earlier patent, Cellect enjoyed an unjustified advantage, a purported time extension of the right to exclude from the date of the earlier patent.” USPTO attorney Kakoli Caprihan at oral arguments.

Cellect has now petitioned for en banc rehearing and has received support from several amici, including IPO, NYIPLA, and Bob Armitage. Cellect’s rehearing petition asserts the panel wrongly treated PTA differently than patent term extension (PTE) under 35 U.S.C. §156 for OTDP purposes. In Novartis AG v. Ezra Ventures LLC, 909 F.3d 1367 (Fed. Cir. 2018), the Federal Circuit held PTE for one family member is not invalidating for OTDP. Cellect contends PTA deserves identical treatment, with OTDP assessing pre-PTA expiration dates. The petition argues the panel misapplied precedent and failed to honor Congressional intent for these “technical term adjustment provisions.”

The statute indicates that the term “shall be extended for 1 day for each day” of USPTO delay. But, it also includes a special caveat for disclaimers: “No patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.” 35 U.S.C. § 154(b)(2)(B) (emphasis added). As mentioned above, however, the patentee did not file a disclaimer in this case, and so argues that that this disclaimer provision is not applicable.

Three amicus briefs support Cellect’s petition. I’ll include a few interesting notes from each. Amicus curiae Bob Armitage proposes rethinking OTDP entirely, suggesting res judicata could address any harassment from enforcing indistinct patents. The NYIPLA argues the panel and Board applied the wrong OTDP test by using a one-way analysis instead of the two-way test required for PTO-delay. It further contends the panel improperly ignored the doctrine’s equitable underpinnings by rigidly applying OTDP without assessing misconduct or gamesmanship. The IPO brief echoes Cellect’s arguments that the panel’s interpretation improperly overrides express statutory language that PTA “shall” issue. IPO contends this formalistic use of ODP to invalidate PTA-adjusted patents is unsound policy that will deter innovation.

The USPTO has been asked to file a responsive brief that was originally due November 30, 2023. The Solicitor’s office has requested an extension to December 14, 2023 “due to the unusually heavy workload in the Solicitor’s Office.” Nothing in the public record indicates whether the request has been granted or denied.

This case is a bit of an unusual situation because the patentee was never asked to file a terminal disclaimer during prosecution — based upon the briefing this was an oversight by the patent examining corps. However, if Cellect wins, then the USPTO will likely receive substantial pressure to allow terminal disclaimers that include an exception for PTA.

2 thoughts on “The Fate of Patent Term Adjustment: In re Cellect Seeks Rehearing on Double Patenting”

1. Based on the statutory language, the CAFC panel ruled correctly. A terminal disclaimer kills PTA – it’s there in black-and-white. Whether or not that’s sound policy is a different question…and one for Congress to consider, seeing as how it was Congress that enacted the AIPA that established PTA, as well as the Hatch-Waxman amendment that established PTE.

2. OTDP is itself a judicially-created thing, which has implicitly received the blessing of Congress inter alia in the enactment of 35 USC 121, but maybe it’s time for Congress to reconsider OTDP too. Although I wonder: was OTDP a case where judicially-made law (at least at the time it was made) had a better result that if it had gone through the sausage-maker of Congress, where lobbyists might well have messed it up (as they did with the AIA)?

3. Regardless of whether or not the *PTO* asked for a terminal disclaimer during prosecution, the patentee could have filed one during litigation and made the question of OTDP moot. Pfizer found itself in a similar situation in around 2007, proceeded with the litigation without filing a TD, and on appeal lost the patent for OTDP. There, however, it didn’t matter, as the later-issued patent claimed a use of a compound, and Pfizer’s earlier patent cited against the later one covered the compound per se, so the later patent didn’t really add much protection and the litigation on this point was presumably carried out as a test case try to push the envelope for when OTDP was appropriate (specifically whether the safe harbor of 35 USC 121 applied only to applications labelled “divisional” or also to those labelled “continuation” or “CIP”). See Pfizer v Teva, 518 F.3d 1353 (2008).

Cellect is a Colorado family business, built on a pioneering invention that enables cameras to fit inside a mobile phone. The USPTO sided with Samsung who is using the technology without permission.

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