Federal Circuit to Reconsider In re Cellect Carve Out?
Back in August, the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. That decision distinguished In re Cellect as not generally deciding that a second later expiring patent can always serve as a proper OTDP reference. And more particularly that a first-filed, first issued, later-expiring claim cannot be invalidated by a later filed, later issued, earlier expiring claim (yes, its a mouthful).
Yesterday, that decision was petitioned for en banc review.
The petition (here) leads with a 112 issue, OTDP is second. With respect to the OTDP issue, petitioner primarily takes exception with the manner in which the Court dispatched prior precedent, explaining:
Even a pro-patentee commentator welcoming the result notes it is in some major tension with In re Cellect and marks a departure from Gilead, producing a dramatic opposite outcome. Regardless of the merits, the panel cannot create exceptions to this Court’s precedent: In this Circuit, a later panel is bound by the determinations of a prior panel, unless relieved of that obligation by an en banc order of the court or a decision of the Supreme Court.
(internal quotes/citations omitted)
As to the Court’s merit based discussion, petitioner argues:
Today, neither issuance nor filing dates necessarily control expiration. Thus, identifying which patent came first is of little import. To the public excluded and waiting to practice the invention, the “first” patent is whichever expires first.
(internal quotes omitted)
While this plays out, the USPTO is left awaiting a final determination before deciding ongoing OTDP disputes with Allergan-like facts. But, in the meantime there have been a handful of CRU decisions addressing the decision (identifying information redacted because I like to be mysterious):
Patent Owner’s response to the final Office action first contends that the decision in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. Aug. 13, 2024) forecloses the nonstatutory double patenting rejections of record. However, the facts in the instant reexamination proceeding are distinguishable from the facts in Allergan. In Allergan, the subject patent was the first filed, first issued patent in its family, however, in the current reexamination proceeding, the XXX patent was not the first to be filed in the benefit chain; as the schematic at page 8 of the after-final reply indicates, the first-filed patent was US Patent X,XXX,XXX. As such, the fact pattern materially differs from that in Allergan.
(emphasis and mystery added)
Stay tuned.