CAFC Distinguishes Cellect Based on First-in-Time Patent Term
Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here)
Allergan answers one question, but others remain.
As the Court explained in distinguishing its earlier decision in Cellect:
. . .Cellect answered a different question than that at issue here. Our holding in Cellect is only controlling in this case to the extent that it requires us to consider [the expiration date after the addition of PTA], not [expiration date the subject patent] would have shared with the [reference patents] in the absence of a PTA award. It does not follow, however, that the [subject patent] must be invalidated by [the reference patents] simply because it expires later. Indeed, Cellect does not address, let alone resolve, any variation of the question presented here—namely, under what circumstances can a claim properly serve as an ODP reference—and therefore has little to say on the precise issue before us.
(emphasis added)
In deciding that the timing in Allergan was distinguishing from that of Cellect, the Court explained:
[T]he fact that the [subject patent] expires later is of no consequence here because it is not a second, later expiring patent for the same invention. As the first-filed, first-issued patent in its family, it is the patent that sets the maximum period of exclusivity for the claimed subject matter and any patentably indistinct variants. We therefore hold that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date.
(internal quote and citations omitted, emphasis added)
The Court distinguished the Allergan scenario from its earlier Gilead decision where the later filed, but earlier expiring patent was deemed a proper ODP reference patent because it claimed a different priority date.
Thus, going forward, if the first filed, first issued patent (for a given invention that “sets the maximum period of exclusivity”) is awarded a longer PTA than later continuation patents, those later secured patents cannot truncate the added PTA term. While it appears that the first issuance is controlling regardless of filing order, technically, that question is left for another day. Also, left to decide is the scenario where subject and reference patents were filed on the same date, or expired on the same date (without the necessary terminal disclaimer). A second Cellect dispute is headed to the Court presenting this latter question. Stay tuned.