A Terminal Disclaimer Is Not an Escape Hatch

Written by: Nefi R. Oliva & Nathan D. Reeves

IN RE CELLECT, LLC

Before Lourie, Dyk, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary: Obviousness-type double patenting analyses for patents with Patent Term Adjustments are based on the adjusted expiration date of the patent.

Cellect sued Samsung for infringement of four patents (the “challenged patents”) that claimed priority to the same parent application. Each of the challenged patents was granted Patent Term Adjustment (“PTA”) for USPTO delays during their prosecutions. Cellect did not file terminal disclaimers for any of the challenged patents. Samsung requested ex parte reexaminations, asserting that the challenged patents were unpatentable based on obviousness-type double patenting. The examiner agreed and invalidated the challenged claims because they were obvious variants of earlier-expiring claims in the same patent family.

Cellect appealed the rejection of the challenged claims to the Board. Cellect noted that obviousness-type double patenting does not invalidate a validly obtained Patent Term Extension (“PTE”) under 35 U.S.C. § 156 and argued that unpatentability of the challenged patents under a double-patenting analysis should be based on the expiration dates of the challenged patents before any PTA is added, similar to how PTE is handled. However, the Board held that the text of pre-AIA 35 U.S.C. § 154 makes clear that unlike PTE, PTA cannot adjust a term beyond the disclaimed date in any terminal disclaimer, and that double-patenting analyses should be based on the adjusted expiration date of the patent.

The Federal Circuit affirmed the Board’s decision. The Federal Circuit held that PTA and PTE should be treated differently when determining whether claims are unpatentable under obviousness-type double patenting, relying on differences between the two statutes.  In particular, the Federal Circuit held that a double-patenting analysis is performed based on the expiration date of the patent after adding any PTA. The Court further explained that, because the patents had now expired, the opportunity for Cellect to file a terminal disclaimer had passed and that terminal disclaimers are not an escape hatch to be deployed after a patent expires.

Editor: Paul Stewart