Commenting on the USPTO’s Proposed Rule on Terminal Disclaimers

by Dennis Crouch

As I have previously discussed on Patently-O, the USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections. Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024).  Under the proposed rule, a terminal disclaimer will only be accepted by the USPTO if it includes an agreement that the patent will be unenforceable if tied (directly or indirectly) to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). This proposal has generated significant debate among patent practitioners, with many expressing concerns about its potential impact on innovation and patent rights.  It is a dramatic change in practice because the typical rule required by statute is that the validity of each patent claim must be separately adjudged. See 35 U.S.C. § 282(a).

The comment period is open until early July, but a number of comments have already been submitted. And I looked through them in order to get some early feedback.  You can read the comments here:

Continue reading Commenting on the USPTO’s Proposed Rule on Terminal Disclaimers at Patently-O.

The NYIPLA Brief: Advocating for Patent Term Adjustments

by Dennis Crouch

The Federal Circuit’s 2023 decision in In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). Cellect is now seeking certiorari, and the New York Intellectual Property Law Association (NYIPLA) has stepped in with an amicus brief supporting the petition, arguing that the case presents “questions of exceptional importance.” Brief for New York Intellectual Property Law Association as Amicus Curiae Supporting Petitioner at 23, Cellect, LLC v. Vidal, No. 23-1231 (U.S. May 28, 2024).

The case arose after Cellect sued Samsung for infringing four of its patents relating to image sensors. Although the patents all had the same effective filing dates, their expiry dates were different since some of the patents had been awarded term adjustment (PTA) because of USPTO delays.  Samsung successfully requested ex parte reexamination, arguing that the patents were invalid for ODP.  The crux of the dispute is whether Cellect, by receiving PTA on some of the patents has improperly  used double patenting to extended its patent term. 

Continue reading The NYIPLA Brief: Advocating for Patent Term Adjustments at Patently-O.

Implied Contracts with the Government over Counterfeit Coins

Implied Contracts with the Government over Counterfeit Coins

by Dennis Crouch

Although not expressly an IP case, the Federal Circuit’s new decision in The Portland Mint v. United States does focus on counterfeiting coins as well as implied contracts with the Federal Government.

The key facts are as follows: The Portland Mint (a private company) participated in the U.S. Mint’s Mutilated Coin Redemption Program, which allowed individuals and businesses to submit bent or partial coins to the U.S. Mint in exchange for payment. The U.S. Mint then uses the mutilated coins to manufacture new coinage.  In 2018, The Portland Mint delivered over 400,000 pounds of coins to a foundry designated by the U.S. Mint. The U.S. Mint melted nearly the entire batch, using the metal to produce new coins. However, it ultimately refused to pay, claiming that testing revealed “a very high percentage of coins submitted were actually made by a manufacturer other than the United States Mint” – i.e. a substantial percentage of the coins were counterfeit.

The Portland Mint then sued the government in the Court of Federal Claims, arguing it was entitled to payment for the genuine portion of the coins under the terms of the regulation and an implied contract.

Continue reading Implied Contracts with the Government over Counterfeit Coins at Patently-O.