Insights

New York – May 16, 2023: A three-person intellectual property team joins Crowell & Moring in New York, bringing in-depth IP litigation experience in patent and trade secret matters.

The Federal Circuit recently denied a petition for rehearing en banc in the much watched In re Cellect matter.  The landmark panel decision determined how obviousness-type double patenting (“ODP”) is impacted when patent term adjustment (“PTA”) is added to the term of one or more patents in a family under 35 U.S.C. § 154(b), resulting in different terms for the family member patents that would otherwise expire on the same day.

A recent Final Initial Determination (“FID”) from newly appointed Administrative Law Judge Hines confirmed the statutory authority of the International Trade Commission (“ITC” or “Commission”) to investigate the alleged importation of goods incorporating misappropriated trade secrets causing injury to a domestic industry, as held by the Federal Circuit in TianRui Grp. Co. Ltd. v. Int’l Trade Comm’n, 661 F.3d 1322 (Fed. Cir. 2011).  The ALJ also held that Complainant had proven its domestic industry had been substantially injured despite the fact that its revenue had increased during the same period.  For Crowell’s previous client alert on TianRui, see here.

The Federal Circuit issued an important and precedential decision in In re Cellect, LLC regarding the interaction of patent term adjustment (“PTA”), terminal disclaimers, and obviousness-type double patenting (“ODP”).  Under the judicially-created ODP doctrine, patent claims that are not patentably distinct from those in a commonly owned, earlier-expired patent are subject to invalidation.  The issue in In re Cellect was whether the challenged patents that expired after another family member solely because of PTA can be unpatentable over the earlier-expired patent under ODP.  As the ODP analysis requires determining which are the later-expiring patents, the answer hinges on when the PTA is applied.