Patent Case Summaries | Week Ending September 1, 2023 | Alston & Bird

In re: Cellect, LLC, Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. (PTAB) Aug. 28, 2023). Opinion by Lourie, joined by Dyk and Reyna.

Cellect owns four patents directed to devices (such as personal digital assistant devices or phones) comprising image sensors. Cellect sued Samsung for infringement. Samsung then requested ex parte reexaminations, asserting that the patent claims were unpatentable based on obviousness-type double patenting (ODP).

In each reexamination proceeding, the examiner determined that the challenged claims were unpatentable as obvious variants of Cellect’s prior-expiring reference patent claims. Cellect appealed that determination to the Patent Trial and Appeal Board, arguing that assessing unpatentability under ODP should be based on the expiration dates of the patents before any Patent Term Adjustment (PTA) is added to the term. Cellect further argued that an ODP rejection is not proper under the equitable principles underlying ODP, and that the ex parte reexamination requests were not properly granted because the examiner had allegedly considered ODP during prosecution, meaning that none of the requests presented a substantial new question of patentability (as required for ex parte reexaminations). The Board rejected all three arguments and sustained the examiner’s determinations that the claims were unpatentable under ODP. Cellect appealed.

The Federal Circuit affirmed. First, the court analyzed the parties’ and supporting amici’s arguments regarding whether a determination of unpatentability of claims under ODP should be based on the expiration date of the patent before or after adding PTA. As an initial matter, the Federal Circuit ruled that PTA under § 154 and Patent Term Extension (PTE) under § 156 “should be treated differently from each other when determining whether or not claims are unpatentable under ODP.” The court concluded that, “while the expiration date used for an ODP analysis where a patent has received PTE is the expiration date before the PTE has been added, the expiration date used for an ODP analysis where a patent has received PTA is the expiration date after the PTA has been added.” Thus, as pertinent to this appeal, the Federal Circuit concluded that “ODP for a patent that has received PTA, regardless whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added.”

Second, the Federal Circuit rejected Cellect’s argument that equitable concerns underlying ODP, including an improper timewise extension of a patent term and potential harassment by multiple assignees, do not exist in this case. The Federal Circuit ruled that “the Board did not err in determining that Cellect received unjustified extensions of patent term.”

Lastly, the Federal Circuit rejected Cellect’s challenge to the Board’s determination that the ex parte reexamination proceedings raised a substantial new question of patentability. Cellect asserted that the same examiner had analyzed all the challenged and reference patents, and was therefore aware of them, yet did not issue any ODP rejections during prosecution despite having issued ODP rejections during the prosecution of other Cellect-owned applications. The court stated that “the examiner’s willingness to issue ODP rejections of claims in other Cellect-owned patent applications but not in the challenged patents and his knowledge of the reference patents do not affirmatively indicate that he considered ODP here.” Thus, substantial evidence supported the Board’s determination that the reexamination requests raised a substantial new question of patentability.

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Sisvel International S.A. v. Sierra Wireless, Inc., et al., Nos. 2022-1387, -1492 (Fed. Cir. (PTAB) Sept. 1, 2023). Opinion by Stark, joined by Prost and Reyna.

Sierra Wireless filed IPR petitions challenging certain claims of two Sisvel patents directed to exchanging frequency information in connection with cell reselection between a mobile station and a central mobile switching center. The Patent Trial and Appeal Board issued a final written decision concluding that the claims were unpatentable as anticipated and/or obvious in view of certain prior art. The Board also denied Sisvel’s motion to amend the claims. Sisvel appealed.

Sisvel raised two arguments on appeal. First, Sisvel challenged the Board’s construction of the claim term, “connection rejection message.” Second, Sisvel challenged the Board’s denial of its motion to amend the claims of one of the challenged patents.

Regarding claim construction, the Federal Circuit agreed with the Board that “connection rejection message” should be given its plain and ordinary meaning of “a message that rejects a connection.” The court rejected Sisvel’s proposed construction of “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station.” The Federal Circuit ruled that such a construction would improperly limit the claims to embodiments using a GSM and UMTS network. The court explained that, “here, the intrinsic evidence provides no persuasive basis to limit the claims to any particular cellular networks.” Because Sisvel raised no other challenge to the Board’s conclusion that the challenged claims are unpatentable, the court affirmed that determination.

Next, the Federal Circuit held that the Board correctly denied Sisvel’s motion to amend. The Board found, and the Federal Circuit agreed, that the proposed substitute claims are broader than the original claims. Thus, the Federal Circuit ruled that “the Board did not abuse its discretion (or err in any respect) and we will affirm its denial of Sisvel’s … motion to amend.”

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