Will SawStop “Nick” OTDP? | Finnegan | Leading IP Law Firm

The United States Constitution states that Congress shall have the power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. See U.S. Const. art. I, § 8, cl. 8.

Certain provisions in the Patent Act provide the conditions for patentability, namely 35 U.S.C. §§ 101 (eligibility), 102 (novelty), 103 (non-obviousness), and 112 (written description, enablement, and definiteness). Those are all set forth by Congress in the Patent Act.

Based on the language in § 101 that an inventor may only obtain “a patent” for his invention, statutory double patenting prohibits a patentee from obtaining two patents to the same invention. See, e.g., In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993) (“If the claimed inventions are identical in scope, the proper rejection is under 35 U.S.C. § 101 because an inventor is entitled to a single patent for an invention.”).

As the case law developed over the years, however, courts established a second form of double patenting—non-statutory double patenting or “obviousness-type double patenting” or “OTDP.” OTDP “is a judicially created doctrine adopted to prevent claims in separate applications or patents that do not recite the ‘same’ invention, but nonetheless claim inventions so alike that granting both exclusive rights would effectively extend the life of patent protection.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1373 (Fed. Cir. 2005). To obtain claims in a subsequent patent application shared by common owners, the application must recite claims that are “patentably distinct” from the earlier-filed patent. If not, OTDP seeks to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first patent.

Its exact date of origin is unclear, but likely the earliest judicial opinion discussing OTDP (and most oft cited) is Judge Giles Rich’s concurrence in In re Zickendraht, 319 F.2d 225, 231 n.4 (CCPA 1963), in which he noted:

Where there is in fact only one invention and, in one way or another, it is being claimed twice, it would seem appropriate to refer to 35 U.S.C. § 101 as authority for saying that the statutes permit an inventor to obtain a patent, meaning only one patent. Where there are in fact two inventions, whether or not they are patentable, this statute would seem to be inapplicable and the second patent has to be denied, if it is denied on some other ground. The ground one finds stated in the cases is to the effect that the second invention must be patentable on its own account, over the invention claimed in the issued patent, just as though the invention so claimed were in the prior art, and tested (since 1953) by the unobviousness requirement of 35 U.S.C. § 103. But since the patented invention is not prior art, the basis for denial is not a statutory basis; rather it is a caselaw development.

Since then, the Federal Circuit (and by extension, federal district courts and the USPTO) have recognized the doctrine and applied it to invalidate patent claims “to prevent a patent owner from extending his exclusive rights to an invention through claims in a later-filed patent that are not patentably distinct from claims in the earlier filed patent.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 999 (Fed. Cir. 2009).

The Federal Circuit explained OTDP’s public policy rationale in In re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985):

[A] rejection based upon double patenting of the obviousness type is a judicially created doctrine grounded in public policy (a policy reflected in the patent statute) rather than based purely on the precise terms of the statute. . . . . The public should ... be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill of the art and prior art other than the invention claimed in the issued patent.

But did the Judiciary have the constitutional authority to create such a condition for patentability not found in the patent statutes passed by Congress as contemplated in Article 1 of the Constitution? Or in imposing such a condition did the Judiciary act ultra vires? These are the questions presented in a recent petition for certiorari filed by SawStop Holding LLC.

SawStop Background: SawStop makes and sells table saws that can detect when a user accidentally contacts a saw blade and stops the blade to prevent or mitigate injury. SawStop applied for a patent directed to an improvement in its saw technology. A patent examiner rejected its claims as unpatentable on the ground of non-statutory double patenting in view of a previously issued patent assigned to SawStop. The examiner found the recited invention was substantially the same as that formerly patented “except for the structural details of the band saw.” SawStop appealed the examiner’s rejection to the Patent Trial and Appeal Board (“PTAB”). See Application 15/935,432, Final Rejection, Oct. 25, 2019, at 4.

On appeal to the PTAB, SawStop argued that “the present non-statutory double patenting rejection is improper because it is not based on a statute; rather it is based on a judicially created doctrine.” Appeal 2020-005769, at 3. SawStop argued that “Congress has not given courts power to create substantive patent law, and therefore, the judicially created doctrine of non-statutory double patenting is ultra vires,” and that “Congress also has not delegated authority to the Patent Office to generate regulatory law concerning non-statutory double patenting.” Id. The PTAB acknowledged that OTDP is a judicially-created doctrine but declined “to retire a doctrine upheld by our reviewing court,” i.e., the Federal Circuit. Id. at 4. SawStop appealed the PTAB’s decision, and the Federal Circuit affirmed without opinion pursuant to Rule 36. See In re SawStop Holding LLC, 21-2161 (Fed. Cir. April 11, 2022) (nonprecedential).

Petition for Certiorari: Raising the same arguments, SawStop now petitions the Supreme Court “to resolve the question of whether the judiciary has the authority to impose a condition for patentability beyond the conditions set forth by Congress in the Patent Act.” Specifically, its petition presents two questions:

1. 1. Does the judiciary have the authority to require a patent applicant to meet a condition for patentability not required by the Patent Act?
   2. Is the judicially created doctrine of non-statutory double patenting ultra vires?

SawStop delineates statutory double patenting from OTDP, acknowledging that § 101’s provision that whoever invents an invention “may obtain a patent therefor” supports the restriction from obtaining a second patent for the same invention. But SawStop explained in its petition that its claims are directed to separate inventions and therefore should not be barred by § 101. Petition for writ of certiorari, June 29, 2022, at 7.

Nor should they be barred by a judicially-created exception, SawStop argued. Specifically, SawStop argued that the Constitution “gives Congress, not the judiciary, the authority to impose conditions for patentability.” Id. at 6, 11 (citing Graham v. John Deere, 383 U.S. 1, 6 (1966). SawStop argues, however, that the Federal Circuit “has imposed an additional condition for patentability beyond what Congress requires,” which SawStop argues is unconstitutional. Id.

Takeaways: This petition is sure to garner attention from practitioners and patent applicants alike as the Supreme Court’s rejection of the OTDP doctrine would have major implications on pending cases with OTDP rejections. It would also certainly impact the Patent Office’s patentability requirements for pending patent applications.

Moreover, in recent years, the composition of the Supreme Court has shifted, and the current Court has taken a much more originalist view of the Constitution and textualist approach in interpreting statutes passed by Congress. That said, it will be interesting to see whether the Court grants certiorari, and if so, how the Court reconciles the judicially-created doctrine of OTDP with other judicially-created patent doctrines such as infringement under the doctrine of equivalents, which the Court has upheld. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (“Petitioner, which was found to have infringed upon respondent’s patent under the doctrine of equivalents, invites us to speak the death of that doctrine. We decline that invitation.”).

The Government waived its right to a response to SawStop’s petition on August 1, 2022. The petition was distributed for the Court’s Sept. 28, 2022 conference. See SawStop Holding LLC v. USPTO, No. 22-11.