A recent petition for certiorari challenges the constitutionality of the judicially created condition for patentability of nonstatutory double patenting, or obviousness-type double patenting - also known as OTDP.

All eyes are on SawStop Holding LLC v. U.S. Patent and Trademark Office, slated for the U.S. Supreme Court's Sept. 28 conference, because a high court move to grant certiorari could signal a seismic shift in OTDP. The government waived its right to a response on Aug. 1.

A maker and seller of table saws used in woodworking machinery, SawStop Holding LLC applied for a patent directed to an improved safety feature in its saw technology.1

Its claims were directed to a band saw with certain structural features and detection circuitry that triggers the saw to stop or retract its blade when a user accidentally makes contact with it to prevent or mitigate injury.

A patent examiner rejected its claims as unpatentable on the ground of OTDP in view of a previously issued patent assigned to SawStop.2

Specifically, the examiner found that each of SawStop's claim limitations were disclosed in its previously issued U.S. Patent No. 7,284,467 "except the structural details of the band saw."3

The examiner found, however, that it would have been obvious to one skilled in the art to apply those features in view of a prior art reference, U.S. Patent No. 3,858,095, which claims a protective device for ban cutters used in textiles that brakes if touched by an operator.4

SawStop appealed the examiner's rejection to the Patent Trial and Appeal Board.5 On appeal, SawStop argued that the OTDP rejection was "improper because it is not based on a statute; rather, it is based on a judicially created doctrine."6

Specifically, SawStop argued that "Congress has not said a patent can be withheld if the judiciary decides some additional doctrine should prevent the issuance of the patent" and that "Congress has not given courts power to create substantive patent law, and therefore, the judicially created doctrine of nonstatutory double patenting is ultra vires."7

The PTAB acknowledged that OTDP is a judicially created doctrine but declined "to retire a doctrine upheld by our reviewing court," i.e., the U.S. Court of Appeals for the Federal Circuit.8 SawStop appealed the PTAB's decision, and the Federal Circuit affirmed without opinion pursuant to Federal Circuit Rule 36.9

Raising similar arguments, SawStop now petitions the Supreme Court "to resolve the question of whether the judiciary has the authority to impose a condition for patentability beyond the conditions set forth by Congress in the Patent Act."10 Its petition presents two questions for review:

  • Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?

  • Is the judicially created doctrine of nonstatutory double patenting ultra vires?11

Article 1, Section 8 of the U.S. Constitution vests with Congress the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.12

Congress over the years has passed statutes establishing the U.S. Patent and Trademark Office and our current patent system, i.e., the Patent Act revised and codified under Title 35 of the U.S. Code.

For example, certain provisions provide the conditions for patentability, namely Title 35 of the U.S. Code, Sections 101 (eligibility), 102 (novelty), 103 (nonobviousness), and 112 (written description, enablement and definiteness).

Based on the language in Section 101 that an inventor may only obtain a patent for his invention, statutory double patenting prohibits a patentee from obtaining two patents to the same invention.13 This is the first form of double patenting.

As the case law developed over the years, however, courts established a second form of double patenting, OTDP, which the Federal Circuit described in the 2005 Perricone v. Medicis Pharmaceuticals Corp. decision as

a judicially created doctrine adopted to prevent claims in separate applications or patents that do not recite the "same" invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.14

To obtain claims in a subsequent patent application shared by common owners, the application must recite claims that are "patentably distinct" from the earlier-filed patent. If not, OTDP seeks to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first patent.

Its exact date of origin is unclear, but likely the earliest judicial opinion discussing OTDP - and most oft-cited - is the late U.S. Circuit Judge Giles Rich's concurrence in the 1963 In re: Zickendraht decision in the U.S. Court of Customs and Patent Appeals, in which he noted:

Where there is in fact only one invention and, in one way or another, it is being claimed twice, it would seem appropriate to refer to 35 U.S.C. § 101 as authority for saying that the statutes permit an inventor to obtain a patent, meaning only one patent. Where there are in fact two inventions, whether or not they are patentable, this statute would seem to be inapplicable and the second patent has to be denied, if it is denied on some other ground. The ground one finds stated in the cases is to the effect that the second invention must be patentable on its own account, over the invention claimed in the issued patent, just as though the invention so claimed were in the prior art, and tested (since 1953) by the unobviousness requirement of 35 U.S.C. § 103. But since the patented invention is not prior art, the basis for denial is not a statutory basis; rather it is a caselaw development.15

Since then, the Federal Circuit and, by extension, federal district courts and the USPTO have recognized the doctrine and applied it to invalidate patent claims "to prevent a patent owner from extending his exclusive rights to an invention through claims in a later-filed patent that are not patentably distinct from claims in the earlier filed patent," as the Federal Circuit stated in the 2009 Procter & Gamble Co. v. Teva Pharmaceuticals USA Inc. decision.16

The Federal Circuit explained OTDP's public policy rationale in the 1985 In re: Longi decision:

[A] rejection based upon double patenting of the obviousness type is a judicially created doctrine grounded in public policy (a policy reflected in the patent statute) rather than based purely on the precise terms of the statute ... "The public should ... be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill of the art and prior art other than the invention claimed in the issued patent."17

But did the judiciary have the constitutional authority to create such a condition for patentability not found in the patent statutes passed by Congress as contemplated in Article 1 of the Constitution? Or in imposing such a condition did the judiciary act ultra vires? These are the questions presented in SawStop's recent petition for certiorari.

In its petition, SawStop delineates statutory double patenting from OTDP, acknowledging that Section 101's provision that whoever invents an invention may obtain "a patent therefor" supports the restriction from obtaining a second patent for the same invention.18

But SawStop asserts that its claims are directed to separate inventions and therefore should not be barred by Section 101.19

Nor should they be barred by a judicially created exception, SawStop argues. According to SawStop, the Constitution "gives Congress, not the judiciary, the authority to impose conditions for patentability."20

SawStop contends, however, that the Federal Circuit "has imposed an additional condition for patentability beyond what Congress requires," which SawStop argues is unconstitutional.21

This petition is sure to garner attention from practitioners and patent applicants alike, as the Supreme Court's rejection of the OTDP doctrine would have major implications on pending cases with OTDP rejections.

It would also certainly affect the patent office's patentability requirements for pending patent applications. It could also impact granted patents where OTDP rejections were overcome during prosecution with the filing of a terminal disclaimer.

Moreover, in recent years, the composition of the Supreme Court has shifted, and the current court has taken a much more originalist view of the U.S. Constitution and a textualist approach in interpreting statutes passed by Congress.

That said, it will be interesting to see whether the court grants certiorari, and if so, how the court reconciles the judicially created doctrine of OTDP with other judicially created patent doctrines such as infringement under the doctrine of equivalents, which the court has emphatically upheld.22


1. See U.S. Patent Appl. No. 15/935,432 (filed Mar. 26, 2018).

2. See U.S. Patent Appl. No. 15/935,432, Final Rejection, Oct. 25, 2019.

3. Id. at 3-4.

4. Id. at 4.

5. See U.S. Patent Appl. No. 15/935,432, Appeal Brief, Mar. 23, 2020.

6. Id. at 3.

7. Id. at 3-4.

8. See Ex Parte Stephen F. Gass, 2021 WL 2157593, at *2 (PTAB May 24, 2021).

9. See In re SawStop Holding LLC , No. 21-2161, 2022 WL 1073339, at *1 (Fed. Cir. Apr. 11, 2022).

10. See SawStop Holding LLC v. United States Patent and Trademark Office , No. 22-11, Petition for Certiorari, at 5 (June 30, 2022) (hereinafter, "Petition").

11. Id. at i.

12. See U.S. Const. art. I, § 8, cl. 8.

13. See, e.g., In re Goodman , 11 F.3d 1046, 1052 (Fed. Cir. 1993) ("If the claimed inventions are identical in scope, the proper rejection is under 35 U.S.C. § 101 because an inventor is entitled to a single patent for an invention.").

14. Perricone v. Medicis Pharm. Corp. , 432 F.3d 1368, 1373 (Fed. Cir. 2005).

15. 319 F.2d 225, 231 n.4 (CCPA 1963).

16. Procter & Gamble Co. v. Teva Pharm. USA, Inc. , 566 F.3d 989, 999 (Fed. Cir. 2009).

17. 759 F.2d 887, 892-93 (Fed. Cir. 1985) (quoting In re Zickendraht , 319 F.2d at 232 (Rich, J., concurring).

18. See Petition at 7.

19. Id. at 7 & n.1.

20. Id. at 6 (citing Graham v. John Deere , 383 U.S. 1, 6 (1966)).

21. Id. at 6, 11-12.

22. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co. , 520 U.S. 17, 21 (1997) ("Petitioner, which was found to have infringed upon respondent's patent under the doctrine of equivalents, invites us to speak the death of that doctrine. We decline that invitation.").

Originally published by Law360.

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