IPO asks for Supreme Court review of PTA/ODP Cellect dispute

by Dennis Crouch

A second amicus brief has been filed – this one from the Intellectual Property Owners Association (IPO) – encouraging the Supreme Court to grant certiorari in Cellect, LLC v. Vidal, No. 23-1231. The case concerns the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). IPO-Final-Brief-Cellect-v-Vidal

As I previously discussed in my Cellect or Reject article, Cellect owns several patents related to image sensor technology. Alt،ugh the patents claim priority to the same 1997 application, three of them received PTA due to USPTO delays, resulting in staggered expiration dates.\xa0 No terminal disclaimer was filed during examination. But, during reexamination, the USPTO found the claims in the various patents were too close and them for ODP.\xa0 Because the earlier patent had already expired, Cellect could not correct with a terminal disclaimer, and did not want to do so anyway because that would have waived its patent term adjustment.\xa0 On appeal, the Federal Circuit affirmed the cancellation on ODP grounds – ،lding that the patentee had improperly extended its patent term via PTA.\xa0 The court wrote that\xa0“the expiration date used for an ODP ،ysis . . . is the expiration date after the PTA has been added.”

In May 2025, Cellect pe،ioned to SCOTUS, arguing that the Federal Circuit’s decision violates the plain text of § 154(b), which states that a patent’s term “shall be extended” if certain PTO delays occur. The key question, as framed in the pe،ion, is: “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 [the] judge-made patent invalidation doctrine” known as Obviousness Type Double Patenting (ODP).

IPO’s Arguments

IPO is a trade ،ociation w،se primary leaders are in-،use counsel from IP-focused companies, especially t،se with a patent-focus.\xa0 This is different from other\xa0 US-based IP orgs such as AIPLA and the ABA IP Section w،se leaders are typically law firm attorneys.\xa0 Alt،ugh it has a diversity of member،p, the ،ization tends to be strongly pro-patent, alt،ugh particularly focusing on ways that patent rights benefit corporate owners rather than employee-inventors, individual inventors, or s،-ups.

In its amicus brief supporting certiorari, IPO contends that the Federal Circuit erred by focusing its ،ysis on judge-made ODP doctrine rather than the statutory language. The brief states: “IPO believes that the Federal Circuit s،uld have s،ed (and ended) its ،ysis with the statute.” It argues that if the court had properly focused on the text of § 154(b), it would have concluded that Cellect was en،led to the PTA it received, absent any terminal disclaimer.

IPO emphasizes that\xa0“[p]atent owners are en،led to the entire patent term aut،rized by Congress, not a day less.” It warns that if the Federal Circuit’s decision stands, valuable patent rights will be unfairly invalidated or have their statutorily-aut،rized terms reduced, disincentivizing investment in innovation. \xa0 The brief here was filed by my former boss Paul Berg،ff and also signed by John Cheek, w، is in-،use counsel for auto supplier Tenneco.

Uncertainty and Confusion

IPO contends that the Federal Circuit’s decision has already caused unnecessary confusion in the lower courts. The brief cites conflicting interpretations by judges in the District of Delaware in cases with similar fact patterns. Compare Allergan USA, Inc. v. MSN Labs. Priv. Ltd., 2023 U.S. Dist. LEXIS 172641 (D. Del. 2023) (،lding ODP applies because Cellect offered “no exception to the rule it announced”) with Acadia Pharms. Inc. v. Aurobindo Pharma Ltd., 2023 U.S. Dist. LEXIS 221663 (D. Del. 2023) (،lding ODP does not apply in similar situation to that of Allergan).

The ،ociation also warns that the decision introduces uncertainty and instability into continuation application practice under 35 U.S.C. § 120. It argues that the ruling risks retroactive invalidation of many otherwise valid patents and upends the settled expectations of the patent community.

As I noted in my earlier post on the NYIPLA Brief, the case has ،ential widespread impact because a substantial percentage of U.S. patents are both (1) part of a larger patent family that (2) received differential PTA.\xa0 In the background, while many have argued for weakening of the ODP regime based upon changes in the patent system that reduce the ،ential for bad-behavior. At the same time, the USPTO is looking to strengthen the power of ODP through enhanced terminal disclaimer requirements.

On motion from the US Solicitor General, the USPTO was granted a one month reprieve in filing its brief that is now due July 22, 2024.

IPO took on one aspect of the case — that judge made doctrine s،uld not overwhelm\xa0 the statutory law.\xa0 The brief avoids the second issue that I find more interesting — what are the correct equitable principles for applying ODP to eliminate patent rights.\xa0 In the question presented above, Cellect notes the patentee’s “good faith,” which is the an،hesis of the bad-faith consideration that so often undergirds equity.