Judge Andrews appeared to break new ground in ODTP law yesterday with his post-trial opinion in Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA (D. Del. Sept. 27, 2023).
(eds. note - I refuse to abbreviate it "Lab'ys." The legal profession has committed more than its fair share of dark linguistic sins, but if Shakespeare wasn't long dead this would have killed him. Actually, check on your favorite author to make sure they survived this edition of the bluebook).
Anyway.
The issue arose in the unusual case where a patent issued and received a term extension of a few hundred days. The patentee filed a continuation which issued a few years later. Because the continuation did not receive a term extension it actually expired before the first patent. Plaintiff (Allergan) submitted this helpful chart with the briefing:
Id., D.I. 428 at 4 (Joint Status Report, Plaintiffs' position)
The parties agreed the relevant claims of the two patents were not patentably distinct—the issue was, does ODTP apply where the first-filed, and first-issued, patent is the one being invalidated?
The Federal circuit had recently answered part of that question in In re Cellect, LLC, 2023 WL 5519716, at *9 (Fed. Cir. Aug. 28, 2023), where it held that OTDP applied to patent term extensions generally. Cellect, however, did not involve the invalidation of the first-filed patent and plaintiff argued that the policy underpinning OTDP didn't apply in this case.
Judge Andrews disagreed, holding:
When analyzing ODP, a court compares patent expiration dates, rather than filing or issuance dates. Allergan nevertheless proposes that I consider these dates, among other facts, as part of a case-by-case review of equitable considerations to determine if a patent owner received an unjust time extension and ODP should therefore invalidate a challenged claim. The court in In re Cellect rejected such analysis, holding that ODP . . . In re Cellect recognizes no exception to the rule it announced, whether for first-filed, first-issued claims or otherwise. I am bound by the Federal Circuit's holding.
Allergan USA, Inc. v. MSN Labs. Private Ltd., C.A. No. 19-1727-RGA, at 40 (D. Del. Sept. 27, 2023) (cleaned up)
I honestly have no idea how often this comes up, but now we know the answer.
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