In re Cellect, dicta question
Rick Neifeld
The following statement (highlighted in red) in In Re Cellect, LLC, 2022-1293, 2022-1294, 2022-1295, and 2022-1296 (Fed. Cir. 8/28/2023) is clearly dicta. What if any basis in case law or policy supports this statement?
We agree with the USPTO that the Board did not err in determining that Cellect received unjustified extensions of patent term. Neither Cellect nor the USPTO disputes that the asserted claims in the challenged patents would have been obvious variations of the respective claims in the invalidating ODP references. The obviousness of the asserted claims in each of the challenged patents can be traced back to the '036 patent. That is the only patent in the family that did not receive a grant of PTA and that expired on October 6, 2017, twenty years from the date on which the priority application was filed. Therefore, any extension past that date constitutes an inappropriate timewise extension for the asserted claims of the challenged patents. To hold otherwise would, in effect, confer on the reference claims of the '036 patent PTA to which they were not entitled. We do, however, note that the non-asserted claims in the challenged patents are entitled to their full term, including the duly granted PTA, unless they are found to be later-filed obvious variations of earlier-filed, commonly owned claims. We have no basis for consideration of that issue here. [In Re Cellect, LLC, 2022-1293 et al. (Fed. Cir. 8/28/2023).]
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
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Chico Gholz
Rick:
What’s the problem? OTDP is a defense. If no one raises OTDP as a defense, those claims are presumed valid.
CHICO
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Rick Neifeld
2. Unjustified extension of monopoly. Boehringer Ingelheim Intern. GmbH v. Barr Laboratories, Inc., 2009-1032, 592 F. 3d 1340, 1348 (Fed. Cir. 1/25/2010) speaks of unjustified advantage relative to patents, not claims.
Boehringer states:
By failing to terminally disclaim a later patent prior to the expiration of an earlier related patent, a patentee enjoys an unjustified advantage — a purported time extension of the right to exclude from the date of the expiration of the earlier patent. The patentee cannot undo this unjustified timewise extension by retroactively disclaiming the term of the later patent because it has already enjoyed rights that it seeks to disclaim. Permitting such a retroactive terminal disclaimer would be inconsistent with "[t]he fundamental reason" for obviousness-type double patenting, namely, "to prevent unjustified timewise extension of the right to exclude." Van Ornum, 686 F.2d at 943-44 (emphasis removed). We therefore hold that a terminal disclaimer filed after the expiration of the earlier patent over which claims have been found obvious cannot cure obviousness-type double patenting.
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
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Chico Gholz
Don’t both of those things have to be raised, either as a defense or in a complaint?
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