CELLECT LLC (Assignee) et al.

Patent Trials and Appeals Board

Dec 1, 2021

2021005303 (P.T.A.B. Dec. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/014,453 02/16/2020 6982742 072374-00002 9046
31013 7590 12/01/2021
KRAMER LEVIN NAFTALIS & FRANKEL LLP
INTELLECTUAL PROPERTY DEPARTMENT
1177 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/01/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Cellect LLC
Patent Owner and Appellant
Appeal 2021-005303
Reexamination Control 90/014,453
Patent 6,982,742 B2
Technology Center 3900
Before JAMESON LEE, ALLEN R. MacDONALD, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. §§ 134(b) and 306, Appellant1 appeals from the
rejection of claims 22, 42, 58, and 66 of U.S. Patent No. 6,982,742 B2 (“the
’742 patent” or “challenged patent”) in this ex parte reexamination. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant states that the real party in interest is “Cellect LLC, a wholly
owned subsidiary of Micro Imaging Solutions LLC.” Appeal Br. 2.
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TECHNOLOGY
The application relates to “solid state image sensors which are
configured to be of a minimum size and used within miniature computer
systems known as palm top computers, personal digital assistants (PDA), or
handheld computers/organizers.” ’742 patent, 1:21–26.
RELATED MATTERS
The challenged patent and its patent family have been involved in a
number of proceedings before federal district courts and the USPTO.
Appeal Br. 2–3 (listing 1 district court case, 20 inter partes review petitions,
and 5 ex parte reexamination requests). Four of the reexaminations involve
substantially similar issues on double patenting. See Appeal Nos. 2021-
005046; 2021-005258; 2021-005302; 2021-005303.
For the challenged patent, three petitions for inter partes review were
denied institution because “the scope of challenged claims 22, 42, 58, and 66
is uncertain.” IPR2020-00559, Paper 14, at 17 (July 21, 2020); IPR2020-
00560, Paper 14, at 16 (July 21, 2020); IPR2020-00561, Paper 14, at 17
(July 21, 2020). As it was not raised in the present proceeding, we do not
address indefiniteness here.
REJECTIONS
Claims 22, 42, 58, and 66 of the ’742 patent are rejected for non-
statutory double patenting over claims 1, 17, 28, 30, 49, 58, and 61 of U.S.
Patent No. 6,424,369 (“the ’369 patent” or “reference patent”). Final Act.
13–21.
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Claims 22, 42, 58, and 66 of the ’742 patent are rejected for non-
statutory double patenting over claims 1, 17, 28, 30, 49, 58, and 61 of the
’369 patent in view of Harris (US 6,009,336). Final Act. 21.
ISSUE
Did the Examiner err in applying an obviousness-type double
patenting rejection to two related patents that (1) claim the same priority
date, (2) have different patent term adjustments, and (3) are expired?
ANALYSIS
Overview
The challenged patent (the ’742 patent) is the child of the reference
patent (the ’369 patent). The challenged patent issued after the reference
patent, but both claim priority to the same application (filed Oct. 6, 1997) so
they normally would expire at the same time (Oct. 6, 2017).2 35 U.S.C.
§ 154(a)(2). However, due to various delays by the USPTO during
prosecution, both were granted a patent term adjustment (“PTA”) under 35
U.S.C. § 154(b), with the challenged patent receiving significantly more
PTA than the reference patent (726 days vs. 45 days). Therefore, the
reference patent expired before the challenged patent. Both patents are now
expired, but the statute of limitations for past damages has not yet passed.
35 U.S.C. § 286.

2 We agree with the Examiner that whether the claims are actually entitled to
the claimed date is not relevant to a double patenting analysis. Ans. 4, 9;
Appeal Br. 21–24. By statute, expiration is based on a priority date “if the
application contains a specific reference to an earlier filed application,”
regardless whether any claim is actually entitled to that priority date. 35
U.S.C. § 154(a)(2) (emphasis added).
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The timeline below shows the relevant dates for the two patents,
including priority, filing, issuance, expiration, and PTA, with the challenged
patent on top and its parent (the reference patent) below:

Timeline for expiration of ’742 patent (top) & ’369 patent (bottom)
In this reexamination, the examiners invoked the doctrine of
obviousness-type double patenting to reject the claims of the challenged
patent as obvious variants of claims in the reference patent. Final Act. 13–
21. Appellant does not dispute that the claims of the reference patent would
have rendered obvious the claims of the challenged patent. Instead,
Appellant argues the reference patent cannot be used for double patenting
because (1) a judicially-created doctrine cannot take away statutorily
guaranteed time, especially in light of the Federal Circuit’s treatment of
patent term extensions (“PTE”) under 35 U.S.C. § 156, (2) the result would
be inequitable given the facts here, and (3) no substantial new question of
patentability has been raised because the examiner should have considered
double patenting in the original prosecution. See Appeal Br. 4–21.
We are not persuaded by Appellant’s arguments. First, unlike a PTE
under § 156, the statute for a PTA (§ 154) states that any terminal disclaimer
should be applied after any PTA. Because the primary purpose of a terminal
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disclaimer is to overcome double patenting, the same rule should apply to
double patenting. Moreover, even if double patenting was based on the
expiration date before applying any PTA (akin to a PTE), double patenting
still would be appropriate here because two patents that are obvious variants
and expire on the same day still need a terminal disclaimer to enforce
common ownership. Second, the result here is not inequitable because the
Federal Circuit has said the existence of any extra term of a second patent is
itself what is inequitable, and Appellant still enjoyed the entire term of the
earliest patent. Third, double patenting is a substantial new question
because, regardless of what should have happened in the original
prosecution, there is insufficient evidence that the original examiner actually
considered double patenting.
Standard of Review
The PTO is “authorized during reexamination to consider the question
of double patenting.” In re Lonardo, 119 F.3d 960, 966 (Fed. Cir. 1997);
see also MPEP § 2258(I)(D). “As with statutory obviousness under 35
U.S.C. § 103, obviousness-type double patenting is an issue of law premised
on underlying factual inquiries.” Eli Lilly & Co. v. Teva Parenteral Meds.,
Inc., 689 F.3d 1368, 1376 (Fed. Cir. 2012).
Legal Background
on Obviousness-Type Double Patenting, Terminal Disclaimers, PTA, & PTE
Obviousness-type double patenting is a “judicially created” doctrine
that “prohibits an inventor from obtaining a second patent for claims that are
not patentably distinct from the claims of the first patent.” Lonardo, 119
F.3d at 965. “There are two justifications for obviousness-type double
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patenting”: (1) “to prevent unjustified timewise extension of the right to
exclude granted by a patent no matter how the extension is brought about”
and (2) “to prevent multiple infringement suits by different assignees
asserting essentially the same patented invention.” In re Hubbell, 709 F.3d
1140, 1145 (Fed. Cir. 2013) (quotation omitted). For example, if an inventor
receives a second patent with claims that are merely obvious variants of a
first patent, double patenting helps prevent the patentee from (1) suing on
the second patent after the first has already expired (i.e., improper time-wise
extension) or (2) selling the two patents to different entities only to have
both entities separately sue an alleged infringer on two obvious variants of
each other (i.e., improper harassment by multiple assignees).
A patentee or applicant often can overcome double patenting by filing
a terminal disclaimer. Boehringer Ingelheim Int’l GmbH v. Barr Labs., Inc.,
592 F.3d 1340, 1346 (Fed. Cir. 2010). Terminal disclaimers are expressly
permitted by statute to “disclaim or dedicate to the public . . . any terminal
part of the term” of a patent. 35 U.S.C. § 253(b). The USPTO has provided
regulations on what a terminal disclaimer must contain to be effective. E.g.,
37 C.F.R. § 1.321. A terminal disclaimer solves the two concerns of double
patenting by (1) making the later patent expire with the earlier patent and
(2) rendering the second patent unenforceable if it is not commonly owned
with the first patent. E.g., 37 C.F.R. § 1.321(b)(2), (c)(3), (d)(3); MPEP
§§ 804.02(VI), 1490(VI)(A), (IX). However, “a terminal disclaimer filed
after the expiration of the earlier patent over which claims have been found
obvious cannot cure obviousness-type double patenting.” Boehringer, 592
F.3d at 1347–48. Thus, a terminal disclaimer cannot cure any double
patenting rejection against the expired patents here. Appeal Br. 19.
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For two issued patents, double patenting and the need for a terminal
disclaimer generally only apply to the later patent.3 See Eli Lilly & Co. v.
Barr Labs., Inc., 251 F.3d 955, 968 & n.5 (Fed. Cir. 2001) (“A later claim
that is not patentably distinct from an earlier claim in a commonly owned
patent is invalid for obvious-type double patenting.”; “A patent owner
cannot avoid double patenting by disclaiming the earlier patent.” (emphases
added)). The question then is how to determine which patent is “later.” The
answer depends on whether the patents issued from applications filed on or
after June 8, 1995. This date is six months after enactment of the Uruguay
Round Agreements Act (“URAA”), which changed the term of a patent from
(A) 17 years after issue to (B) 20 years from the earliest filing date of any
non-provisional U.S. application to which that patent claims priority. 35
U.S.C. § 154.
For two post-URAA patents, the “later” patent generally is determined
by looking at the expiration date. Novartis Pharms. Corp. v. Breckenridge
Pharm. Inc., 909 F.3d 1355, 1362–63, 1366 (Fed. Cir. 2018). For two pre-
URAA patents or certain scenarios involving one patent on each side of the
URAA date, the “later” patent is instead determined by looking at the issue
date. Id. at 1362 (“Traditionally, courts looked at the issuance dates of the
respective patents, because, under the law pre-URAA, the expiration date of
the patent was inextricably intertwined with the issuance date, and used the
earlier-issued patent to limit the patent term(s) of the later issued
patent(s).”). Prior to the URAA, a patent expired 17 years after issuance, so

3 For two co-pending applications, a provisional double patenting rejection
against both applications may be appropriate if it is not yet known which
will result in the later patent. See MPEP § 804(I)(1).
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“looking to patent issue dates had previously served as a reliable stand-in for
the date that really mattered—patent expiration.” Gilead Scis., Inc. v. Natco
Pharma Ltd., 753 F.3d 1208, 1215 (Fed. Cir. 2014). Finally, if two post-
URAA patents expire on the same day or two pre-URAA patents have the
same issue date, then the patent with the higher patent number may be
invalid for double patenting.4 See Underwood v. Gerber, 149 U.S. 224
(1893) (affirming Patent No. 348,073 was void over the same inventors’
Patent No. 348,072 when both patents had the same filing date, issue date,
and expiration date).
A complication arises, however, in that Congress also provided two
ways to potentially prolong the term of a patent. A patent term adjustment
(“PTA”) under § 154(b) may adjust the term based on certain delays by the
USPTO during prosecution, and a patent term extension (“PTE”) under
§ 156 may extend the term based on certain regulatory delays, such as the
FDA reviewing a new drug. 35 U.S.C. §§ 154(b), 156. The question before
us now is how a PTA under § 154 should factor into the double patenting
analysis, such as whether double patenting should be based on the expiration
date before a PTA or after. The Federal Circuit already addressed similar
questions for a PTE, yet it did so by contrasting the statutes for PTE (§ 156)
versus PTA (§ 154). We discuss these cases below.

4 As the patents here issued on different dates, we need not resolve whether
an analysis for patents issued on the same day should first look to priority
date or filing date rather than patent number (e.g., two pre-URAA patents
with the same issue date but the patent with the higher patent number has a
significantly earlier filing date and priority date).
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PTE & Terminal Disclaimers
(Merck v. Hi-Tech)
For a PTE under § 156, the starting point is Merck & Co. v. Hi-Tech
Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007). In that case, the patent
owner had already filed a terminal disclaimer to overcome an obviousness-
type double patenting rejection. 482 F.3d at 1318–19. Later, the patent was
awarded a PTE under § 156. Id. at 1319. The question before the court was
whether a PTE under § 156 could be applied to a patent subject to a terminal
disclaimer. Id. at 1324. The court held “a patent term extension under § 156
is not foreclosed by a terminal disclaimer.” Id. at 1322. In particular, “[t]he
computation of a Hatch–Waxman patent term extension is from the
expiration date resulting from the terminal disclaimer and not from the date
the patent would have expired in the absence of the terminal disclaimer.” Id.
at 1322–23. Put another way, a PTE under § 156 is applied after any
terminal disclaimer.
The Federal Circuit reached this conclusion by contrasting PTE with
PTA. For a PTA, Ҥ 154(b)(2)(B) expressly excludes patents in which a
terminal disclaimer was filed from the benefit of a term adjustment for PTO
delays.” Merck v. Hi-Tech, 482 F.3d at 1322. Specifically, the statute states
that “[n]o patent the term of which has been disclaimed beyond a specified
date may be adjusted under this section beyond the expiration date specified
in the disclaimer.” 35 U.S.C. § 154(b)(2)(B). The Federal Circuit explained
that “[t]here is no similar provision that excludes patents in which a terminal
disclaimer was filed from the benefits of Hatch-Waxman extensions” under
§ 156. Merck v. Hi-Tech, 482 F.3d at 1322. Thus, a terminal disclaimer is
applied before a PTE because PTE is different than PTA.
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PTE & Double Patenting
(Novartis v. Ezra)
The next question was how a PTE applied to double patenting in the
absence of a terminal disclaimer. As noted above, a terminal disclaimer
generally is filed to overcome obviousness-type double patenting. In re Van
Ornum, 686 F.2d 937, 948 (CCPA 1982); 37 C.F.R. § 1.321(c), (d); MPEP
§ 1490(II). Given this relationship between double patenting and terminal
disclaimers and given the holding in Merck v. Hi-Tech that a terminal
disclaimer applies before a PTE, the Federal Circuit not surprisingly held “as
a logical extension of our holding in Merck & Co. v. Hi-Tech” that double
patenting also should be considered before a PTE. Novartis AG v. Ezra
Ventures LLC, 909 F.3d 1367, 1373–74 (Fed. Cir. 2018). Thus, “if a patent,
under its original expiration date without a PTE, should have been (but was
not) terminally disclaimed because of obviousness-type double patenting,
then this court’s obviousness-type double patenting case law would apply,
and the patent could be invalidated.” Id. at 1374. “However, if a patent,
under its pre-PTE expiration date, is valid under all other provisions of law,
then it is entitled to the full term of its PTE.” Id.
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A timeline for the patents in Novartis v. Ezra is reproduced below:

Novartis v. Ezra, 909 F.3d at 1370. As shown in the timeline above, the
challenged patent (the ’229 patent) had an earlier filing date, issue date, and
pre-PTE expiration date than the reference patent (the ’565 patent). Because
the challenged patent was the earlier patent (at least pre-PTE), the
challenged patent was not invalid for double patenting. Id. at 1373–75.
PTA & Double Patenting
The question now before us is how a PTA affects double patenting.
Appellant relies on one broadly worded sentence in Novartis v. Ezra to argue
that “a judge-made doctrine” (i.e., obviousness-type double patenting)
cannot “cut off a statutorily-authorized time extension.” Appeal Br. 11
(quoting Novartis v. Ezra, 909 F.3d at 1375). Although the holding in
Novartis v. Ezra was about a PTE under § 156, Appellant extends that
argument to suggest that any PTA under § 154 also is a “statutory grant of
additional term” that “cannot be deemed improper.” Id. at 12.
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Appellant’s argument is not persuasive because it ignores the plain
text of § 154 and the actual holding in Novartis v. Ezra.
First, contrary to Appellant’s assertions, the decision in Novartis v.
Ezra reaffirms that a double patenting analysis should be done even if a
patent has a PTE. The real question was whether double patenting should be
considered before or after a PTE, with the court ultimately deciding double
patenting should be considered before a PTE. Novartis v. Ezra, 909 F.3d at
1374 (“if a patent, under its original expiration date without a PTE, should
have been (but was not) terminally disclaimed because of obviousness-type
double patenting, then this court’s obviousness-type double patenting case
law would apply, and the patent could be invalidated”). So here, we must do
a double patenting analysis and the question is whether double patenting
should be considered with the expiration dates before or after a PTA.
Second, the outcome for a PTE under § 156 in Merck v. Hi-Tech was
based on the difference between § 156 and § 154. In particular,
Ҥ 154(b)(2)(B) expressly excludes patents in which a terminal disclaimer
was filed from the benefit of a term adjustment for PTO delays,” but there is
an “absence of any such prohibition regarding Hatch–Waxman extensions”
under § 156. Merck v. Hi-Tech, 482 F.3d at 1322. That reasoning in Merck
v. Hi-Tech was important enough that when summarizing the prior case,
Novartis v. Ezra repeated the prior case’s “contrast between § 156 for PTE
with the language of § 154 for patent term adjustments.” Novartis v. Ezra,
909 F.3d at 1373–74. Thus, the rule in Merck v. Hi-Tech and Novartis v.
Ezra for when to apply a PTE does not apply to a PTA because those
decisions were premised on the contrast between PTE and PTA.
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Third, the statutory language in § 154 is clear that any terminal
disclaimer should be applied after any PTA (i.e., a PTA cannot adjust a term
beyond the expiration date in any disclaimer). 35 U.S.C. § 154(b)(2)(B)
(“No patent the term of which has been disclaimed beyond a specified date
may be adjusted under this section beyond the expiration date specified in
the disclaimer.”). Although Appellant asserts that the statute says the term
“shall” be extended (Reply Br. 8), Appellant omits that all of those sentences
are prefaced with the phrase “Subject to the limitations under paragraph
(2),” which includes the limitations due to terminal disclaimers. Id.
§ 154(b)(1)(A), (B), (C). Thus, as recognized by Merck v. Hi-Tech and
Novartis v. Ezra, the statute itself is clear that unlike a PTE under § 156, a
PTA under § 154 shall not extend the term of a patent past the date of any
terminal disclaimer.
Fourth, given that terminal disclaimers arise almost exclusively to
overcome obviousness-type double patenting, Congress expressly addressing
terminal disclaimers in § 154 is tantamount to addressing obviousness-type
double patenting. See Van Ornum, 686 F.2d at 948; 37 C.F.R. § 1.321(c),
(d); MPEP § 1490(II). Indeed, Novartis v. Ezra itself recognized that a rule
for terminal disclaimers (from Merck v. Hi-Tech) should also apply to
obviousness-type double patenting as “a logical extension.” 909 F.3d at
1373. The Novartis v. Ezra court rejected the argument “that the Merck
court’s rationale only spoke to the impact of a new PTE on preexisting
terminal disclaimers,” instead finding that the prior “holding on the validity
of a PTE for a patent that was terminally disclaimed in order to overcome an
obviousness-type double patenting rejection is directly relevant to the instant
case.” Id. at 1374 (quotation omitted). Obviousness-type double patenting
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and terminal disclaimers are two sides of the same coin: the problem and the
solution. Just as Novartis v. Ezra found a rule on terminal disclaimers was
“directly relevant” to double patenting and therefore applied that rule to
double patenting as “a logical extension,” so too we hold that the statutory
rule for terminal disclaimers in § 154 is directly relevant to double patenting
and we apply that same rule to double patenting as a logical extension.
Indeed, in at least one related reexamination, Appellant itself argues
that double patenting should be applied to post-PTA dates. Compare Appeal
2021-005302, Appeal Br. 7 (“the ’369 Patent . . . and ’626 Patent . . . have
the same expiration date except for statutorily-authorized PTA”), with id. at
10 n.1 (“the ’626 Patent cannot be used as an obviousness-type double
patenting reference because the ’626 Patent expired after the ’369 Patent”).
Finally, the Federal Circuit also previously said that “another crucial
purpose of the doctrine” of double patenting was “to prevent an inventor
from securing a second, later expiring patent” for “[p]atents . . . filed at the
same time” that “have different patent terms due to examination delays at
the PTO” under “§ 154(b) (patent term adjustments).” AbbVie Inc. v.
Mathilda & Terence Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366,
1373 (Fed. Cir. 2014); see also In re Fallaux, 564 F.3d 1313, 1319 (Fed.
Cir. 2009) (“In some cases there may still be the possibility of an unjust
time-wise extension of a patent arising from patent term adjustment under
§ 154 or patent term extension under § 156.”). That is precisely the scenario
we have here where two patents have the same effective filing date but
expire at different times due solely to PTAs.
Appellant provides no plausible reason for ignoring the clear statutory
text and the contrast between § 154 and § 156 that formed the basis of Merck
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v. Hi-Tech and Novartis v. Ezra. Nor has Appellant provided any reason for
applying the post-PTA date for terminal disclaimers yet the pre-PTA date
for double patenting.5 We therefore hold that both obviousness-type double
patenting and terminal disclaimers should be considered after any PTA.6
The District Court Decision in Mitsubishi Is Not Persuasive
Appellant also cites a district court decision in Mitsubishi Tanabe
Pharma Corp. v. Sandoz, Inc., No. 3:17-cv-05319, __ F. Supp. 3d __, 2021
WL 1845499, at *27–30 (D.N.J. Mar. 22, 2021). Appeal Br. 13–17. We do
not find Appellant’s citation to Mitsubishi persuasive. See also Ans. 8.
First, an earlier district court decision in the Western District of
Michigan came out the opposite way from Mitsubishi. Magna Elecs., Inc. v.
TRW Automotive Holdings Corp., No. 12-cv-654, 2015 WL 11430786
(W.D. Mich. Dec. 10, 2015). Although the Magna Electronics case appears
to have settled prior to any appeal, we understand that the decision in
Mitsubishi is currently on appeal to the Federal Circuit (No. 21-1876; filed
Apr. 23, 2021).

5 Applying different dates for double patenting versus terminal disclaimers
also creates inconsistent results. For example, suppose the pre-PTA
expiration date of Patent A is 1 day after Patent B. Therefore, Patent B
could be used as a double patenting reference (pre-PTA) against Patent A,
and a terminal disclaimer (post-PTA) would wipe out all PTA on Patent A.
However, Patent A could not be used as a double patenting reference (pre-
PTA) against Patent B, so Patent B could have an unlimited amount of PTA,
even long after the expiration of Patent A.
6 35 U.S.C. § 154(b)(3)(A) gives the Director some discretion “establishing
procedures for the application for and determination of patent term
adjustments.” Because we decide the case based on the reasoning above, we
need not decide whether that discretion includes the PTA issues here.
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Second, the Mitsubishi district court never addressed that double
patenting applies even to two patents that have the same filing date, the same
issue date, and the same expiration date. Underwood, 149 U.S. 224. For
example, a terminal disclaimer is still needed to ensure that two patents
remain commonly owned. See Sandy MacGregor Co. v. Vaco Grip Co., 2
F.2d 655, 657 (6th Cir. 1924) (“in Underwood v. Gerber it was thought that
the splitting up of one indivisible right into two and subjecting the infringer
to suits by two different owners of the right infringed justified applying the
defense of double patenting as against two patents issued on the same day”);
Van Ornum, 686 F.2d at 945 (similarly summarizing Underwood).
Third, the district court’s entire discussion of the difference between
§ 154 and § 156 is relegated to a single footnote in which the court does not
appear to have understood that a terminal disclaimer is the standard way to
cure double patenting, thereby overlooking why the Federal Circuit decided
a rule for terminal disclaimers (Merck v. Hi-Tech) should also apply to a
double patenting analysis (Novartis v. Ezra) as a “logical extension.” See
Mitsubishi, 2021 WL 1845499, at *29 n.45.
Fourth, even within the same paragraph, the district court confuses
when the challenged patent would have expired relative to the reference
patent. Compare Mitsubishi, 2021 WL 1845499, at *29 (“absent the PTA
granted to the ’788 Patent, both the ’788 Patent and the ’219 Patent would
have the same expiration date”), with id. (“but for the § 154(b) PTA, the
’788 Patent would have expired before the ’219 Patent”). So it is not clear
whether the district court was even considering the right facts.
Finally, in Mitsubishi, the challenged patent issued before the
reference patent (May 17, 2011 vs. July 17, 2012). 2021 WL 1845499, at
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*27–28. That is opposite the present case where the challenged patent
issued after the reference patent. Thus, even if we treated a PTA like PTE
and double patenting were considered before a PTA, the outcome here still
would be the opposite of Mitsubishi because the challenged patent in
Mitsubishi was the earlier patent whereas the challenged patent here is the
later patent.
For these reasons, we give little weight to the Mitsubishi decision.
Double Patenting Here Was Proper Regardless When the PTA Is Applied
As discussed above, we hold that double patenting should be
considered after any PTA is applied. Here, after applying the PTA, the
challenged patent expired after the reference patent (PTA of 726 days vs. 45
days). Appeal Br. 10. Thus, the later-expiring claims of the challenged
patent were properly rejected for obviousness-type double patenting over the
earlier-expiring claims of the reference patent.
However, even if we treated a PTA like PTE and did a double
patenting analysis before factoring in any PTA, a double patenting rejection
still would be proper here because prior to the PTA, the challenged patent
and the reference patent would have expired on the same day (Oct. 6, 2017).
Underwood, 149 U.S. 224 (affirming a second patent as void when both
patents had the same filing date, issue date, and expiration date); see also
MPEP § 804(I)(B)(1)(b)(ii) (“If both applications are actually filed on the
same day, or are entitled to the same earliest effective filing date[,] . . . the
provisional nonstatutory double patenting rejection made in each application
should be maintained until the rejection is overcome,” such as by “filing a
terminal disclaimer in the pending application.”); Ans. 8 (“ODP is
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appropriate to be considered and addressed in reexamination, regardless
whether two relevant patents have different expiration[] dates”). Here, the
challenged patent is a later-issued patent claiming obvious variants of the
earlier-issued reference patent. Even with the same expiration date, double
patenting and a terminal disclaimer are still needed to ensure that the later-
issued obvious variant retains common ownership with the earlier-issued
patent. This is necessary to accomplish double patenting’s second goal “to
prevent multiple infringement suits by different assignees asserting
essentially the same patented invention.” Hubbell, 709 F.3d at 1145; see
also Sandy MacGregor, 2 F.2d at 657 (“in Underwood v. Gerber it was
thought that the splitting up of one indivisible right into two and subjecting
the infringer to suits by two different owners of the right infringed justified
applying the defense of double patenting as against two patents issued on the
same day”); see also Van Ornum, 686 F.2d at 945 (similarly summarizing
Underwood). Appellant never addresses that double patenting applies to
patents with the same expiration date.
Appellant does argue that “there has been no harassment by multiple
assignees” because the patents have been commonly owned so far and the
patents are now expired. Appeal Br. 12. But the statutory time limitation
for past damages is “six years prior to the filing of the complaint.” 35
U.S.C. § 286. The patents here expired less than six years ago, so the risk
still remains for multiple assignees to seek past damages. Indeed, Appellant
has already filed one lawsuit after both patents expired. Appeal Br. 2.
Appellant further argues that the patents “will be maintained by the
same owner.” Appeal Br. 12. The only basis for this assertion is a single
paragraph from a declaration of one inventor:
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Because of the exclusive (field-of-use) nature of certain license
agreements, MIS/Cellect may not freely assign these patents and
they have been, and will continue to be, owned by MIS/Cellect.
As the Chief Technology Officer and Co-Founder of Micro
Imaging Solutions LLC, I can confirm that MIS/Cellect will not
sell off or split apart any portion of the patents that comprise the
’742 Patent family to a third-party.
Adair Decl. ¶ 24 (Sept. 28, 2020). But such a declaration is unpersuasive.
For example, suppose Appellant went out of business and a bankruptcy court
(not Appellant itself) split the patents among various creditors. Even if
Appellant’s licensees might have a breach-of-contract claim against the new
patent owners, a third party sued by the multiple new owners has no way to
enforce the inventor’s declaration absent double patenting.
There also is no need to wait until actual harassment by multiple
assignees. See Appeal Br. 9 (“this judicially created doctrine requires . . .
harassment by multiple assignees”). One goal of double patenting and
terminal disclaimers is to preemptively prevent the risk of such harassment:
Even though both patents are issued to the same patentee or
assignee, it (is) possible that ownership of the two will be divided
by later transfers and assignments. The possibility of multiple
suits against an infringer by assignees of related patents has long
been recognized as one of the concerns behind the doctrine of
double patenting.
Van Ornum, 686 F.2d at 944 (quoting Chisum on Patents § 9.04(2)(b)
(1981)); see also Ans. 4.
In sum, the double patenting rejection of the later-issued claims here
was proper regardless of whether (A) the PTA is applied before the double
patenting analysis (because the challenged patent’s post-PTA expiration date
is after that of the reference patent) or (B) the PTA is applied after the
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double patenting analysis (because despite the pre-PTA expiration dates
being the same, the challenged patent is a later-issuing obvious variant still
at risk for harassment by multiple assignees).
Substantial New Question
Appellant argues there is no substantial new question of patentability
because the examiner in the original prosecution was aware of both
applications and “conducted an interference search” for both, so the
examiner “would have” made a double patenting rejection “if [the examiner]
believed that such a rejection was warranted.” Appeal Br. 20–21, 9–10.
We are not persuaded by Appellant’s arguments. A substantial new
question of patentability does exist here because there is insufficient
evidence that double patenting actually was considered during the original
prosecution. Regardless of what ideally should have happened during the
original prosecution, the reexamination process exists because items
sometimes get overlooked or errors are made. See, e.g., Patlex Corp. v.
Mossinghoff, 758 F.2d 594, 604 (Fed. Cir. 1985) (“The reexamination
statute’s purpose is to correct errors made by the government . . . and if need
be to remove patents that should never have been granted.”), on reh’g, 771
F.2d 480, 481 (Fed. Cir. 1985) (denying the petition in relevant part).
The Examiner also determines that the PTA itself provided a “new
light” for a substantial new question of patentability as the amount of PTA,
if any, was not known during prosecution. Ans. 4, 9. In the specific
circumstances here, we agree. Generally, a patent term adjustment
calculation is performed after the notice of allowance and “the patent term
adjustment indicated on the patent is the ‘official’ notification of the Office’s
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patent term adjustment determination.” MPEP § 2733. Thus, at the time of
a notice of allowance, an examiner does not necessarily know whether the
resulting patent will receive any PTA or if so how much. Here, the
reference patent had already issued in 2002 and been granted 45 days of
PTA, whereas the challenged patent did not issue or receive any PTA until
2006. So from 2002 and 2006 (i.e., for most of the prosecution of the
application that would result in the challenged patent), the reference patent
expired after the expected expiration date for the challenged patent (which
did not yet have any PTA), not before it.
Equity
Appellant argues that “an equitable doctrine should not be applied in a
manner that would be inequitable” given that “filing a terminal disclaimer
now is not possible as the patents are expired” and “the record is completely
devoid” of any “gamesmanship” or “unjustified or improper timewise
extension.” Appeal Br. 19–20 (quotation omitted).
However, the Federal Circuit is unambiguous that the inequity here is
Appellant’s enjoyment of a second patent’s term beyond the expiration of
the first patent:
When the claims of a patent are obvious in light of the claims of
an earlier commonly owned patent, the patentee can have no
right to exclude others from practicing the invention
encompassed by the later patent after the date of the expiration
of the earlier patent. But when a patentee does not terminally
disclaim the later patent before the expiration of the earlier
related patent, the later patent purports to remain in force even
after the date on which the patentee no longer has any right to
exclude others from practicing the claimed subject matter. By
permitting the later patent to remain in force beyond the date of
the earlier patent’s expiration, the patentee wrongly purports to
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inform the public that it is precluded from making, using, selling,
offering for sale, or importing the claimed invention during a
period after the expiration of the earlier patent.
By failing to terminally disclaim a later patent prior to the
expiration of an earlier related patent, a patentee enjoys an
unjustified advantage—a purported time extension of the right to
exclude from the date of the expiration of the earlier patent. The
patentee cannot undo this unjustified timewise extension by
retroactively disclaiming the term of the later patent because it
has already enjoyed rights that it seeks to disclaim.
Boehringer, 592 F.3d at 1347–48 (citations omitted); see also Lonardo, 119
F.3d at 965. Appellant also never addresses preserving the public’s right to
make what is covered by the earlier patent after it expired:
The bar against double patenting was created to preserve that
bargained-for right held by the public. See, e.g., Miller v. Eagle
Mfg. Co., 151 U.S. 186, 197–98, 202 (1894); . . . Odiorne v.
Amesbury Nail Factory, 18 F.Cas. 578, 579 (C.C.D.Mass.1819).
If an inventor could obtain several sequential patents on the same
invention, he could retain for himself the exclusive right to
exclude or control the public’s right to use the patented invention
far beyond the term awarded to him under the patent laws. As
Justice Story explained in 1819, “[i]t cannot be” that a patentee
can obtain two patents in sequence “substantially for the same
invention[] and improvements”; “it would completely destroy
the whole consideration derived by the public for the grant of the
patent, viz. the right to use the invention at the expiration of the
term.” Odiorne, 18 F.Cas. at 579. Thus, the doctrine of double
patenting was primarily designed to prevent such harm by
limiting a patentee to one patent term per invention or
improvement.
Gilead, 753 F.3d at 1212 (parallel citations omitted).
Even beyond the mere existence of the extra term, Appellant concedes
that it actively filed at least one lawsuit on the challenged patent after its
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expiration, yet Appellant fails to address whether that lawsuit seeks damages
for the extra term of the challenged patent. See Appeal Br. 2.
Moreover, invalidating the challenged claims of a second patent (or
third, fourth, and fifth patents in the case of the numerous related
reexaminations here) does not take away Appellant’s right to enforce its first
patent.
Thus, Appellant fails to persuade us that the result here is inequitable.
Conclusion
Appellant argues both double patenting rejections collectively with no
separate arguments based on Harris. Accordingly, we sustain the double
patenting rejections of claims 22, 42, 58, and 66.
OUTCOME
The following table summarizes the outcome of the rejection:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
22, 42, 58, 66 Double patenting:
’369 patent
22, 42, 58, 66
22, 42, 58, 66 Double patenting:
’369 patent and Harris
22, 42, 58, 66
Overall
Outcome
22, 42, 58, 66
TIME TO RESPOND
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
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