AIPLA Files Amicus Brief in Support of Certiorari with the US Supreme Court in Cellect v. Vidal

Written June 25, 2024

Arlington, VA. June 21, 2024 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief in support of certiorari with the United States Supreme Court in Cellect, LLC v. Vidal.  The case involves the interplay between patent term adjustment (“PTA”) and non-statutory obviousness-type double patenting (“ODP”).  PTA, as codified in 35 U.S.C. § 154(b), guarantees full term to patents that issue late due to administrative delay by the U.S. Patent and Trademark Office (USPTO).  ODP, a judicially created, equitable doctrine, prevents patentees from unjustly extending patent term by filing multiple patents (with multiple expiration dates) that cover patentably indistinct subject matter.  A panel of Federal Circuit judges held that ODP can invalidate patents that have PTA under Section 154(b) if they are not subject to terminal disclaimers.  AIPLA previously also filed a brief in support of rehearing en banc at the Federal Circuit, but en banc review was denied.


AIPLA’s amicus brief urges the Supreme Court to grant certiorari because the Federal Circuit’s holding is based on an erroneous construction of Section 154(b).  Despite the statute’s plain-language “guarantee” that patents “shall” receive PTA—not to mention its lack of any reference whatsoever to ODP—the panel held that an unstated, negative implication from a limited exception relating to terminal disclaimers was evidence of Congress’s “clear intent” to permit ODP to cut off PTA.  As the brief explains, the panel’s decision violates several basic principles of statutory interpretation set forth by the U.S. Supreme Court.  In particular, the brief argues that PTA is neither unjust nor a true extension of patent term, but rather a Congressionally authorized way for patentees to recover lost term due to administrative delays. 


The brief also argues that the panel’s decision is an inequitable application of ODP, a doctrine rooted in equity.  Historically, courts have deployed ODP to limit patent gamesmanship—that is, to prevent patentees from unjustly extending their patent term.  Under the Federal Circuit’s holding, however, courts must apply ODP regardless of gamesmanship—even where its application unjustly reduces statutorily guaranteed patent term for patents that the USPTO failed to issue on time.  Lower courts have already struggled to interpret and apply this bright-line rule.   As a result of the panel’s decision, the brief argues, patentees must now choose to either disclaim their PTA (even if no ODP rejection was raised during prosecution), or risk invalidation of their patents by ODP.  And because a staggering number of patents are guaranteed at least some PTA (as USPTO delays continue to rise), the decision will have a wide-ranging impact.  It has already upended settled expectations, threatened continuation practice, and reduced incentives to innovate.  AIPLA therefore believes that the Court should grant certiorari.  

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