AIPLA Filed Amicus Brief with the Court of Appeals for the Federal Circuit in In re: Cellect, LLC

Written November 29, 2023

Arlington, VA. November 22, 2023 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief with the Court of Appeals for the Federal Circuit in In re: Cellect, LLC. in support of a petition for rehearing en banc.  The case concerns non-statutory obviousness-type double patenting (“ODP”), a judicially-created doctrine intended to prevent improperly obtained patent term extensions where a patentee owns multiple patents (with multiple expiration dates) covering substantially similar subject matter.  The panel’s decision expanded the ODP doctrine by holding that, in the absence of a terminal disclaimer, ODP can operate to invalidate a patent even where its term was extended solely due to statutorily-authorized patent term adjustments (“PTA”), which are granted to patentees based on delays caused by the U.S. Patent and Trademark Office.
AIPLA’s amicus brief urges the Federal Circuit to grant rehearing en banc because the panel’s decision stretches the ODP doctrine beyond its policy-based roots, creating a bright-line rule based on a tenuous statutory construction that will have far-reaching unintended consequences.  Although Congress has never codified ODP, the panel interpreted a narrow statutory provision relating to the effect of terminal disclaimers on PTA as tantamount to “clear” Congressional intent to allow ODP to invalidate patents based on PTA-extended terms.  The brief explains that this rationale is unsound for several reasons – including under the well-established principle that if Congress had intended this result, it could have passed clear legislation to that effect. 
The brief goes on to argue that the panel’s decision is a departure from the equitable underpinnings of ODP, a doctrine originally crafted to avoid the risk of unfair results based on tactical filings and gamesmanship.  Instead of evaluating whether ODP was required in this case to curb an unjust extension of patent term, the panel created a sweeping, bright-line rule that allows ODP to invalidate any patent with a later expiration date, regardless of the basis for that later date or whether a party acts in good faith.  As a result, the brief argues, the panel’s decision has created great uncertainty regarding the status of countless patents that have received the benefit of PTA to offset USPTO delays, upset settled expectations, and effectively nullified a statutorily-authorized grant of term, without the approval of Congress.  Because this case presents a question of exceptional importance, AIPLA believes en banc review is warranted.