Foley Hoag LLP attorneys, on behalf of the New York Intellectual Property Association (NYIPLA), filed an amicus curiae brief in In re Cellect, LLC, urging en banc rehearing in a case that concerns the judicially-created doctrine of non-statutory obvious-type double patenting (ODP). While NYIPLA urges rehearing, it takes no position on the underlying merits of the dispute and ultimately supports no party.
In August 2023, a Federal Circuit panel affirmed a Patent Trial and Appeal Board (PTAB) decision and held that held that patent term extension (PTE) and patent term adjustment (PTA) are not the same for purposes of an obviousness-type double patenting (ODP) analysis. Specifically, the court held that "ODP for a patent that has received PTA, regardless of whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added." The holding invalidated certain of Cellect's patents that received statutorily granted PTA based on ODP references from the same patent family that had no or less PTA.
On November 13, 2023, Cellect petitioned for en banc rehearing, asserting that the panel erred in treating PTA differently than PTE for ODP purposes. Cellect, in particular, asked the full Federal Circuit to consider 1) whether the statutory language and legislative history of the patent term adjustment statute, 35 U.S.C. § 154(b), as well as Federal Circuit precedent, instruct that PTA should be interpreted consistent with the PTE statute, 35 U.S.C. § 156, for purposes of determining the expiration date for an obviousness-type double patenting analysis, and 2) whether the panel's decision overlooked the policy grounds underlying the judicially created obviousness-type double patenting doctrine in a manner that usurps Congress' legislative function."
The NYIPLA filed an amicus brief, respectfully submitting that the panel's decision made the congressional guarantees of PTA "worthless at best" and "in reality, it makes [the guarantees] a detriment."
NYIPLA supported en banc review based on Cellect's Petition grounds, also arguing that the panel decision divorced ODP from its equitable roots and that the panel's decision abrogates the congressionally guaranteed grant of PTA under 35 U.S.C. §154. In addition, NYIPLA argued that the panel and PTAB improperly applied a one-way ODP analysis instead of two-way test in its examination of Cellect's patents. A one-way ODP analysis, asking whether a claim is an obvious variant of a reference claim. is used unless the delay is "solely" the PTO-delay, in which case precedent requires a two-way test. In Cellect's case, a the later-filed patent issued after the earlier-filed patent soley due to PTO delay. NYIPLA further argued that the panel's decision is a significant detriment to patent owners —particularly small businesses and individual owners — and will stifle innovation.
In the wake of Cellect, companies are likely to abandon strategies of seeking patent protection and then subsequently filing continuations to cover additional and new aspects in fear of that subsequent invention invalidating prior patents.
The Foley Hoag attorneys who represented NYIPLA are Jeffrey Lewis, Lucas Watkins, David Surry and Britt Saunders. NYIPLA is also represented by Robert Rando of Greenspoon Marder LLP, Alicia Russo of Venable LLP, Robert Isackson of Leason Ellis LLP, Brian Gummow of Haley Guiliano LLP, Charles Macedo, Gary Gershik, and David Goldberg of Amster Rothstein & Ebenstein LLP, and Paul Coletti of Johnson & Johnson.