LITIGATION TRENDS 2025 | 87 T O C E M P E S G A N T I I P C A P R O W C S P O R T C O N T A C T I N T A P P P A T C C L S E C Loper Bright’s impact on future statutory interpretation remains uncertain. Although Loper Bright states that it does not overturn any previous decision based on Chevron deference, thereby minimizing upending settled expectations, Loper Bright at 2273, the Court in Corner Post, Inc. v. Bd. of Governors of the Fed. Reserve Sys., 144 S. Ct. 2440 (2024), allows prospective litigants, not yet injured at the time the statute is enacted or challenged by others, to dispute agency interpretations in the future. Since Loper Bright, the Federal Circuit has commented on the scope of deference given to USPTO interpretations of 35 U.S.C. § 316(a)(4) (‘regulations governing inter partes review and the relationship of such review of other proceedings’ before the USPTO). In SoftView LLC v. Apple Inc., the Federal Circuit found that the statute “provides a source of rulemaking authority for the USPTO to issue such regulations.” Softview, 108 F.4th 1366, 1372 (Fed. Cir. 2024). Indeed, the Federal Circuit noted that the bounds of section 316(a)(4) may be defined at a later date, specifically reevaluating “in consideration of the Supreme Court’s recent ruling in” Loper Bright. Id. at fn. 2. This suggests that the Federal Circuit may reevaluate the Patent Office’s interpretation of section 316(a)(4), as well as other statutes where the Patent Office’s actions were previously given deference under Chevron. Patent Term for Family of Patents Only Limited by the First Issued Patent (ObviousType Double Patenting) The Federal Circuit’s 2024 decision in Allergan v. MSN Laboratories clarifies the application of obviousness-type double patenting (ODP) in conjunction with Patent Term Adjustment (PTA), following the court’s 2023 decision in In re Cellect, which requires that ODP analysis includes any PTA. Allergan USA, Inc. v. MSN Labs Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024); In re Cellect, 81 F.4th 1216 (Fed. Circ. 2023). ODP is a judicially-created doctrine limiting an inventor to a single patent for an invention. The purpose of the ODP doctrine is to prevent a patentee from obtaining a patent term extension for the same invention, or an obvious modification, and from obtaining any further patent with claims that are not patentably distinct by filing another related patent. ODP rejections on a second related patent can be overcome by disclaiming any patent term beyond the expiration date of the reference patent; this requires filing a terminal disclaimer as provided for by statute. ODP-based invalidity challenges of issued patents can be addressed several ways, including filing any terminal disclaimer(s) before the reference patent has expired. A Patent term adjustment (PTA) extends a patent’s term at issuance to account for USPTO delays during the examination process. Thus, patents within the same family that are entitled to the same priority date can have different expiration dates due to varying PTA. Turning to the decisions, Cellect owned four patents that were challenged in reexamination proceedings at the USPTO – the ’742, ’369, ’626, and ’621 patents. These four challenged patents claimed priority to the same application that issued as a fifth parent patent, the ’255 patent. As illustrated below, the four challenged patents received differing PTA (and a sixth patent, the ’036 patent, receiving none). None of the challenged patents was subject to a terminal disclaimer. Further, as shown above, none of the challenged ’742, ’369, ’626, and ’621 patents were the original issued patent, that is the ’255 patent. The court determined that the ODP analysis must be based on the expiration dates after the additional PTA was applied, and found the claims of the challenged patents unpatentable for ODP over claims of various patents within the patent family. In re Cellect raised concerns for patent owners relying on continuing applications, including that a patent with PTA Patent Litigation P A T 86 | Weil, Gotshal & Manges LLP
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