Double patenting is measured against the expiration date after patent term adjustment

2023-08-28Fed. Cir.

In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. Aug. 28, 2023) (precedential) (Lourie, J., joined by Dyk and Reyna, JJ.), affirming four ex parte reexamination decisions of the Patent Trial and Appeal Board in Reexamination Nos. 90/014,453, 90/014,454, 90/014,455 and 90/014,457

United States Patent Nos. 6,982,742, 6,424,369, 6,452,626 and 7,002,621 claim devices with image sensors and all descend from the application that issued as United States Patent No. 6,275,255. Each received patent term adjustment under Section 154(b) of Title 35 of the United States Code, none was terminally disclaimed, and all have expired. A fifth member, United States Patent No. 6,862,036, received no adjustment and expired on October 6, 2017. Samsung, sued by Cellect, requested ex parte reexaminations, and the Board held the asserted claims unpatentable for obviousness-type double patenting over earlier-expiring family members, all tracing to the '036 patent. Cellect conceded the claims were obvious variants and argued that a judge-made doctrine cannot cut off statutory term, as Novartis AG v. Ezra Ventures LLC held for patent term extension under Section 156. The Federal Circuit, Judge Lourie joined by Judges Dyk and Reyna, affirmed: "ODP for a patent that has received PTA, regardless 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." Section 154(b)(2)(B), which bars adjustment beyond a disclaimed date, ties adjustment to terminal disclaimers as Section 156 does not. Good faith and a promise not to split ownership are no answer, and "A terminal disclaimer is not an escape hatch to be deployed after a patent expires."

What it changesContinuation families are how artificial intelligence portfolios are built: a parent on the training method, children on inference, serving and the product features, each claiming priority to the same filing and each accumulating its own patent term adjustment as the art unit's backlog varies. After this decision any child that expires later than a sibling because of adjustment is exposed to a double patenting challenge from the sibling's claims, and if the challenge comes after expiration no disclaimer can cure it. Portfolio reviews should map the adjusted expiration date of every member of every family, identify the pairs where a later-expiring patent claims an obvious variant of an earlier one, and file terminal disclaimers deliberately where the extra term is worth less than the risk, rather than by default on every continuation or never at all. In prosecution, each child's claims should be drafted to be patentably distinct from the parent's. The decision is precedential, and the family had already expired when it lost.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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