Ex parte Cellect LLC, Appeal 2021-005302

• Decision Date: 01 December 2021
• Docket Number: 454,Appeal 2021-005302,Reexamination Control 90/014
• Parties: Ex parte Cellect LLC Patent Owner and Appellant Patent 6, 424, 369 B1 Technology Center 3900
• Court: Patent Trial and Appeal Board

Ex parte Cellect LLC Patent Owner and Appellant Patent 6, 424, 369 B1 Technology Center 3900

Appeal 2021-005302

Reexamination Control 90/014, 454

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 1, 2021

FILING DATE: 02/17/2020

Before JAMESON LEE, ALLEN R. MacDONALD, and MICHAEL J. ENGLE Administrative Patent Judges.

DECISION ON APPEAL

ENGLE ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. §§ 134(b) and 306 Appellant^[1] appeals from the rejection of claims 1, 17, 19, 21, 22, 27, 49, 55, and 61 of U.S. Patent No. 6, 424, 369 B1 ("the '369 patent" or "challenged patent") in this ex parte reexamination. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

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/organize." '369 patent, 1:16-21.

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 the claims cannot be determined without undue speculation." IPR2020-00562, Paper 14, at 20 (July 21, 2020); IPR2020-00563, Paper 14, at 19 (July 21, 2020); IPR2020-00564, Paper 14, at 19-20 (July 21, 2020). As it was not raised in the present proceeding, we do not address indefiniteness here.

REJECTIONS

Claims 1, 17, 19, 21, 22, 27, 49, 55, and 61 of the '369 patent are rejected for non-statutory double patenting over claims 1, 17, 19, 21, 22, 27, and 33 of U.S. Patent No. 6, 862, 036 ("the '036 patent") in view of Tran (US 6, 202, 060 B1;Mar.13, 2001). Final Act. 5-39.

Claims 1, 17, 19, 21, 22, 27, 49, 55, and 61 of the '369 patent are rejected for non-statutory double patenting over claims 1, 17, 19, 21, 22, 27, 49, 55, and 61 of U.S. Patent No. 6, 452, 626 ("the '626 patent") in view of admitted prior art. Final Act. 40-60.

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

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. Or. 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 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. 17-18.

For two issued patents, double patenting and the need for a terminal disclaimer generally only apply to the later patent.^[2] 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 "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.^[3] 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.

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. Mat 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, "§ 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 maybe adjusted under this section beyond the expiration date...