The U.S. Supreme Court is currently considering Cellect v. Vidal, a case with potential impact on many patents.
Cellect is the owner of 4 patents being challenged, each of which is directed towards devices comprising image sensors. The patents are all part of one patent family claiming priority from a single patent application. Because of delays during prosecution, each of the challenged patents was granted patent term adjustments (PTA) of varying lengths.
Cellect sued Samsung for infringement of these patents. Samsung responded by seeking ex-parte reexaminations, asserting that, due to Obviousness-Type Double Patenting (ODP), the patents were invalid. During the reexamination, the examiner determined that the claims were obvious variants of the prior expiring reference patent claims, and the claims were invalidated.
Cellect appealed the rejection, arguing that ODP doesn’t invalidate a validly obtained patent term extension, and therefore shouldn’t negate a statutory grant of patent term adjustment.
Some background in case the reader isn’t a patent attorney.
Prior to 1995, a patent term was 17 years from the date of issuance. Accordingly, delays at the Patent and Trademark Office (USPTO) didn’t impact patent terms because those terms began at issuance.
In 1995 the United States passed the Uruguay Round Agreements Act, which set patent terms to 20 years from earliest claimed priority date. Since all patents in a family have the same earliest priority date, it follows they would have the same expiration date. This meant that after the URAA, delays at the USPTO meant cutting into the effective term of a patent.
In 1999, the Patent Term Guarantee act, part of the American Inventors Protection Act, promised inventors a patent term adjustment period for examination delays caused by the PTO. Given the amount of delays, the PTO adjusted approximately half of the patents issued between 2005 and 2022.
One of the effects of this has been that patents in the same family routinely expire later than others due to different delays in application prosecution, and their mandated adjustments.
So what’s the problem?
There is a ‘double patenting’ doctrine that bars applicants from receiving more than one patent on the same invention. Way back, inventors could theoretically extend their exclusivity over an invention by claiming obvious variations of the same thing. Staggering these applications could give the inventor a longer monopoly than was justified under the principles of the patent system. To rectify that problem the Courts developed a doctrine called obviousness-type double patenting (OPD). That doctrine was designed to prevent unjustified extensions where a later patent is merely an obvious version of a prior patent in the family. It is the extension of patent terms that is the sole basis for the doctrine.
However, if an applicant has two patents on indistinct inventions, the applicant can file a terminal disclaimer to make the patents expire on the same day. If the patent owner files the terminal disclaimer, then no ODP. But after the first patent expires, ODP invalidates the patent expiring later.
In 1984, Congress authorized patent term extensions (PTE) to compensate pharmaceutical patent holders when the FDA approval process would bar the invention from the commercial market. PTE would extend the patent term for the amount of time lost during that approval period. This is a different mechanism than PTA, which adjusts patent terms due to USPTO delays.
Back to the situation as it stands.
Where does this leave ODP? The point of ODP was to stop gaming of the system to extend patent terms. But both PTA and PTE are congressionally authorized compensations for time lost due to outside factors, not attempts to game the system. The Federal Circuit affirmed in 2007 and 2018 that differences in expiration dates caused by PTE did not trigger ODP. But the relation of ODP to PTA has been less certain.
Cellect challenged the decision before the Federal Circuit, arguing that the Board had wrongly expanded the scope of ODP, and punished patent owners whose terms had been adjusted. But the Federal Circuit upheld the decision.
The case is now before the Supreme Court and the stakes are high. The decision as it stands would largely undo Congress’s Patent Term Guarantee Act. Given the amount of patent terms that have been adjusted, there are a lot of patents that could be invalidated solely on the bases of those adjustments.