Ex parte Cellect LLC, Appeal 2021-005258

• Decision Date: 01 December 2021
• Docket Number: Reexamination Control 90/014,Appeal 2021-005258,457
• Parties: Ex parte Cellect LLC Patent Owner and Appellant Patent 7, 002, 621 B2 Technology Center 3900 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
• Court: Patent Trial and Appeal Board

Ex parte Cellect LLC Patent Owner and Appellant Patent 7, 002, 621 B2 Technology Center 3900

Appeal 2021-005258

Reexamination Control 90/014, 457

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

December 1, 2021

Before ALLEN R. MacDONALD, GARTH D. BAER, 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 25-29 and 33 of U.S. Patent No. 7, 002, 621 B2 ("the '621 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 communication devices specifically including videotelephones." '621 patent, 1:21-25.

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 (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, two petitions for inter partes review were denied institution because the same claims at issue here "all have indiscernible or uncertain scope." IPR2020-00571, Paper 14, at 20 (Oct. 2, 2020); IPR2020-00572, Paper 15, at 20-21 (Oct. 1, 2020). As it was not raised in the present proceeding, we do not address indefiniteness here.

REJECTION

Claims 25-29 and 33 of the '621 patent are rejected for non-statutory double patenting overclaims 52, 55, and 61 of U.S. Patent No. 6, 452, 626 ("the'626 patent" or "reference patent"). Final Act. 4-17.

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 '621 patent) is the child of the reference patent (the '626 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). 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 3 5 U.S.C. § 154(b), with the challenged patent receiving significantly more PTA than the reference patent (759 days vs. 59 days). Therefore, the reference patent expired before the challenged patent. The challenged patent actually expired a few months later-midway through its PTA period-due to Appellant's failure to pay an 11.5-year maintenance fee. Ans. 11. Both patents are now expired, but the statute of limitations for past damages has not yet passed. 35U.S.C. §286.

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:

(Image Omitted)

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. 4-17. 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. 4-19.

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 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. 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., 689F.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(VT)(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." GileadScis., Inc. v. Natco Pharma Ltd., 753F.3d 1208, 1215 (Fed. Cir. 2014)....