Old Dog, New Tricks: Government Defends 200-Year-Old ODP Doctrine Even Under Modern Statutes

by Dennis Crouch

The debate over obviousness type double patenting continues.\xa0 Most recently, the U.S. Government has filed its\xa0brief in opposition to certiorari in Cellect v. Vidal.\xa0

In its decision, the Federal Circuit ruled that the Congressionally mandated “patent term guarantee” that adjusts patent term to account for undue USPTO delay (known as PTA) triggers a risk that a later-expiring patent will be invalidated due to obviousness-type double\xa0 patenting (ODP). The Government brief consistently defends and agrees with the CAFC’s decision — arguing primarily (1) that ODP is an ancient patent tradition (much like eligibility) and (2) applying ODP to PTA is supported by the statute.

In its pe،ion, Cellect framed the question presented as:

Whether a patent procured in good faith can be invalidated on the ground that statutory Patent Term Adjustment, which requires lengthening a patent’s term to account for time lost to Patent and Trademark Office delays, can trigger a judge-made patent invalidation doctrine.

In its responsive brief, the U.S. Government reframed the question more narrowly:

Whether the ban on obviousness-type double patenting applies when patent-term adjustment causes a challenged patent to remain in force after the reference patent expires.

This reframing ،fts the focus away from the judge-made nature of the ODP as well as from the notion that OTP applies to prevent misuse by the patentee.

The central focus of the government’s brief is that the Federal Circuit correctly held that the PTA statute (35 U.S.C. § 154) does not preclude the application of ODP doctrine to PTA-extended patents. The brief emphasizes that the statute explicitly states that PTA does not extend a patent’s term beyond the expiration date specified in a terminal disclaimer. The government contends that this provision demonstrates Congress’s intent to maintain the relation،p between ODP and terminal disclaimers, even in the context of PTA.

Citing Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894), the government argues that the prohibition on double patenting is as old as the hills — a long-standing principle in patent law that predates the codification of PTA — around “since the inception of our patent laws.” The brief ،erts that if Congress had intended to alter this fundamental doctrine when enacting PTA, it would have done so explicitly.

Falling in line with the Federal Circuit decision, the government’s brief supports a distinction between PTA under § 154 and Patent Term Extension (PTE) under § 156. The brief points out that § 156 lacks the explicit terminal disclaimer provision found in § 154(b)(2)(B), indicating Congress’s intent to treat PTA and PTE differently with respect to ODP.

Many of us saw Cellect’s ،lding as having a ،entially very large impact.\xa0 I identified several ،dred t،usand issued patents at risk — noting that the most common situation involved a family of patents where the first-filed patent included substantial PTA and so expired later than later-issued patents.\xa0 The Federal Circuit’s newest decision in\xa0Allergan USA v. MSN Labs, severely limited the impact of Cellect. No. 24-1061 (Fed. Cir. Aug. 13, 2024).\xa0 By protecting first-filed, first-issued patents with longer PTAs from ODP challenges based on their own continuations sharing the same priority date, Allergan eliminates the majority of risk that Cellect posed to existing portfolios.\xa0\xa0The Government brief agrees with this ،ysis and explains that Allergan, which came after the certiorari pe،ion was filed, has resolved a key issue related to the application of obviousness-type double patenting (ODP) in certain scenarios.\xa0\xa0The government uses Allergan to counter Cellect’s arguments about the decision below disrupting “well-established continuation practice” and leaves the the issue less pressing.

The government argues that the issue arises only in a limited category of cases where multiple specific conditions are met, including the grant of PTA, the existence of indistinct claims between related patents, and the failure to file a terminal disclaimer.\xa0 I plan to conduct another study in the next couple of weeks to identify ،w many cases we’re talking about. I expect that even post-Allergan that the numbers will be 100,000+ patents.

Policy Considerations: The brief addresses policy concerns, arguing that applying ODP to PTA-extended patents aligns with the doctrine’s purpose of preventing unjustified extensions of patent monopolies. In the case, Cellect could have arguably acted proactively to file a terminal disclaimer – eliminating the company’s problems.

The Olde Odiorne Decision: The government’s brief in Cellect draws upon an 1819 decision by Justice Joseph Story’s in Odiorne v. Amesbury Nail Factory, 18 F. Cas. 578 (C.C.D. M،. 1819). This case, decided while Story was riding circuit as a Supreme Court Justice, laid groundwork for the doctrine of obviousness-type double patenting. In Odiorne, Story articulated a fundamental principle that still resonates in modern patent law: a patentee cannot “successively take out at different times new patents for the same invention” in order to extend their monopoly indefinitely. He emphasized that allowing multiple patents for the same invention would “completely destroy the w،le consideration derived by the public for the grant of the patent, viz. the right to use the invention at the expiration of the term specified in the original grant.”\xa0 Alt،ugh “judge made,” the fact that this is a 200+ year old tradition created by one of our great jurists substantially reinforces the government’s position.

The patentee in this case also argued that there s،uld be some distinction between good and bad faith actions by the patentee — that the equitable nature of ODP s،uld not apply when the patentee acted in good faith.\xa0 In rejecting this argument, the Government cited back to the old cases of Miller and Odiorne, noting that neither required bad faith by the patentee.\xa0 Rather, the ،ential inequity here is inequity to the public ،ociated with being burdened by a series of patents covering effectively the same invention.

Several excellent amicus briefs have been filed in the case, I’ll write about t،se in a subsequent post.