US IP law groups call for Cellect rehearing at Fed Circ

NYIPLA and AIPLA urge for a Federal Circuit rehearing in case concerning patent term guarantees and obviousness-type double patenting | Impact of doctrine on patent owners underscores need for clarity in ODP applications, say the IP associations.

The US Court of Appeals for the Federal Circuit is facing calls from prominent IP associations to rehear In re: Cellect, a case that has raised pivotal questions about obviousness-type double patenting (ODP).

ODP aims to prevent the unjustified extension of patent exclusivity beyond the term of a patent.

The New York Intellectual Property Law Association (NYIPLA) and the American Intellectual Property Association (AIPLA) filed amicus briefs on November 22, urging the appeals court to review a decision delivered by the Patent Trial and Appeal Board (PTAB).

Tension

Lucas Watkins, partner at Foley Hoag and a signatory of the briefs, explained:

“ODP was created to prevent improper extension of patent terms, and the doctrine allows courts to invalidate patents that, in their view, are too long.”

The filing argued that a rehearing en banc is essential to reconsider the PTAB’s decision—later upheld by the Federal Circuit—that affirmed the unpatentability of Cellect's patents.

Watkins explained that the importance of the decision is that it addressed a scenario where certain patents had extended terms due to patent term adjustment (PTA), a benefit granted only when the US Patent and Trademark Office (USPTO) exceeds the statutory guarantees of timely processing established by Congress.

“The real tension here is that Congress gave patent owners a guarantee of timely action from the patent office, which is now being undermined by the federal courts,” he added.

‘Limited options’ for patent owners

Patent owners are now confronting a challenge in which obtaining an early patent in a family with substantial term adjustment limits their options in getting other patents in the family, according to Watkins.

Typically, they can pursue additional patents in the family, exploring different claiming approaches to capture subject matter not covered by the first patent.

However, currently obtaining another patent in the family can put the initial patent at risk, he explained.

“Under this decision, patent owners must decide whether to voluntarily give up the patent term adjustment received for the first patent,” he said.

Identification issues

The difficulty, he added, arises from the lack of clarity in identifying potential double patenting issues. Decisions must be made promptly, often involving significant uncertainty.

Watkins explained: “Either you potentially risk the validity of your primary patent, or you cut off a couple of years of patent term. There are no good options right now.

“We're asking the Federal Circuit to review [In re: Cellect] as it's an issue that affects a lot of people. It's important for the Federal Circuit to address and clarify the law,” he added.

The arguments put forth by the duo in the briefs included the application of an incorrect legal test, the neglect of the equitable aspects of ODP, the potential repercussions on innovation, and the vitiation of Congress' assured patent term.

“In our view the [Federal Circuit] should reconsider the doctrine of ODP as it's really outdated, and the Uruguay Round Agreements of 1995 eliminated the potential for gamesmanship to extend [the] patent term,” Watkins argued.

Arguments for a rehearing

NYIPLA and AIPLA say that the panel disregarded the equitable foundations of ODP, going against established legal precedent, and highlighted how the decision can negatively impact innovation, specifically for small businesses.

The suggested remedy of filing terminal disclaimers is deemed burdensome and unfair to patent owners.

The decision asks patent owners to reduce the term of issued patents to avoid ODP potentially destroying entire valuable patent collections.

Additionally, the briefs claimed that the ruling undermines the guaranteed patent term established by Congress, which they argue violates a fundamental constitutional principle.

The NYIPLA and AIPLA argued that ODP should not override explicit congressional intent, emphasising the exceptional importance of this legal question.

Both associations urged the court to grant Cellect’s petition for rehearing en banc, emphasising the need for clarity in ODP applications and protection of congressionally mandated patent term guarantees.

Case background

Cellect filed a lawsuit against Samsung in the US District Court for the District of Colorado, claiming infringement of four patents related to image sensor devices.

These patents share a common origin from US patent number 6,275,255.

In response, Samsung initiated four ex parte reexaminations, arguing that the patents were not valid due to ODP—a point not previously raised by the examiner during the original prosecution.

The examiner found challenged claims to be obvious variants of Cellect's prior-expiring reference patent claims.

The US 6,862,036  patent, lacking PTA, became the pinpoint for ODP invalidation.

The claims of US patent 7,002,621 were ruled unpatentable over patent 6,452,626; '626 over patent 6,424,369; patent 6,982,742 over '369; and '369 over '036. All ODP-invalidated claims traced back to the '036 patent.

Equitable principles

Cellect appealed to the PTAB, arguing that the ODP rejection lacked merit based on equitable principles, and that ODP shouldn't invalidate PTA, just as case law established that ODP shouldn’t invalidate patent term extension (PTE)—a separate statutory scheme.

The board disagreed, holding that ODP analysis should consider the patent's expiration date with PTA.

It emphasised differences in the statutory language authorising PTE and PTA, stating that PTA can't extend a term beyond a terminal disclaimer.

The board affirmed, leading Cellect to appeal to the Court of Appeals.

Cellect argued in its appeal that the board erred in determining the patent's unpatentability for ODP, based on the expiration date of a patent containing any granted PTA.

Additionally, Cellect claimed that the board overlooked the equitable concerns related to ODP in the ex parte reexamination proceedings.

And finally, Cellect argued that the board erred in finding a substantial new question of patentability in the underlying reexaminations, challenging the legitimacy of the reexamination proceedings.

While the Federal Circuit considered Cellect’s arguments, it found them unpersuasive and reaffirmed the board’s decision.

Cellect petitioned for a rehearing en banc and has received support from prominent law organisations such as the NYIPLA and AIPLA.

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