In Re Cellect, LLC, No. 22-1293 (Fed. Cir. 2023)Annotate this Case
Cellect’s challenged patents are directed to personal digital-assistant devices or phones. Each claims priority from a single application, the 255 patent. The 369 and 626 patents are continuations-in-part of the 255 patent. The 742 patent is a continuation-in-part of the 369 patent; the 621 patent is a continuation-in-part of the 626 patent. The 036 patent is a continuation of the 626 patent. Each of the challenged patents was granted Patent Term Adjustment (PTA) for Patent Office delay during prosecution (pre-AIA 35 U.S.C. 154(b)); each would have expired on the same day but for the grants of PTA. None were subject to a terminal disclaimer during prosecution; the patents have all expired.
Cellect sued Samsung for infringement. Samsung requested ex parte reexaminations, asserting that the patents were unpatentable based on obviousness-type double patenting (ODP). The examiner determined that the challenged claims were obvious variants of Cellect’s prior-expiring reference patent claims, tracing back to the 036 patent, which did not receive PTA and retained an expiration date 20 years after the filing of the 255 application. The 621 patent claims were unpatentable over the 626 patent claims, which were unpatentable over the 369 patent claims. The 742 patent claims were unpatentable over the 369 claims. The 369 patent claims were unpatentable over the 036 claims, which did not receive PTA. The Board and Federal Circuit affirmed. ODP for a patent that has received PTA, regardless of whether a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added.