Patent Term Adjustment

Terminal Disclaimer to “Expedite” Patent Prosecution?

A District Court committed error, says a Federal Circuit panel, “by presuming that terminally disclaimed continuation patents are patentably indistinct variations of their parent patents without analyzing the scope of the patent claims.”  SimpleAir, Inc. v. Google LLC, No. 2016-2738 (March 12, 2018) (precedential) (opinion by Judge Lourie, joined by Judges Reyna and Chen).  The question here was whether SimpleAir could allege infringement of a terminally-disclaimed patent in a chain of continuations when prior litigation with Google had resulted in judgments of non-infringement of three other patents, including the parent, in the chain.  The district court had granted Google’s Rule 12(b)(6) motion to dismiss on grounds that the Kessler Doctrine and claim preclusion barred SimpleAir from its claim that Google infringes other, never-litigated, patents in the family.  The Federal Circuit vacated that decision. The court agreed with Google that just because the prior litigation had not included the presently-asserted patents did not mean that claim preclusion was foreclosed. However, even though “there is a substantial overlap between” the present and the previously-asserted patents, including “a common specification and terminal disclaimer to a common parent,” there was nonetheless an insufficient record to support a holding of claim preclusion. Claim preclusion requires… Read More »Terminal Disclaimer to “Expedite” Patent Prosecution?

Patent Term Adjustment Can Be Reduced Even Without “Actual Delay” in Prosecution

In Gilead Sciences, Inc. v. Lee, the Federal Circuit that supplemental applicant submissions during patent prosecution need not incur “actual delay” to be counted as a reduction in calculating patent term adjustment (PTA). 2015 U.S. App. LEXIS 2828 (Fed. Cir. Feb. 26, 2015). Plaintiff Gilead Sciences, Inc. (“Gilead”) had appealed the decision of the Eastern District of Virginia’s grant of summary judgment to the Director of the United States Patent and Trademark Office (“USPTO”), Michelle Lee, and the Federal Circuit affirmed. Read Peter Keros’s post on the decision on the Bejin Bieneman PLC blog.