Justices Could Prompt A Seismic Shift In Double Patenting

• Published date: 25 August 2022
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Aaron Clay, Adriana Burgy and Thomas Irving

A recent petition for certiorari challenges the constitutionality of the judicially created condition for patentability of nonstatutory double patenting, or obviousness-type double patenting - also known as OTDP.

All eyes are on SawStop Holding LLC v. U.S. Patent and Trademark Office, slated for the U.S. Supreme Court's Sept. 28 conference, because a high court move to grant certiorari could signal a seismic shift in OTDP. The government waived its right to a response on Aug. 1.

A maker and seller of table saws used in woodworking machinery, SawStop Holding LLC applied for a patent directed to an improved safety feature in its saw technology.¹

Its claims were directed to a band saw with certain structural features and detection circuitry that triggers the saw to stop or retract its blade when a user accidentally makes contact with it to prevent or mitigate injury.

A patent examiner rejected its claims as unpatentable on the ground of OTDP in view of a previously issued patent assigned to SawStop.²

Specifically, the examiner found that each of SawStop's claim limitations were disclosed in its previously issued U.S. Patent No. 7,284,467 "except the structural details of the band saw."³

The examiner found, however, that it would have been obvious to one skilled in the art to apply those features in view of a prior art reference, U.S. Patent No. 3,858,095, which claims a protective device for ban cutters used in textiles that brakes if touched by an operator.⁴

SawStop appealed the examiner's rejection to the Patent Trial and Appeal Board.⁵ On appeal, SawStop argued that the OTDP rejection was "improper because it is not based on a statute; rather, it is based on a judicially created doctrine."⁶

Specifically, SawStop argued that "Congress has not said a patent can be withheld if the judiciary decides some additional doctrine should prevent the issuance of the patent" and that "Congress has not given courts power to create substantive patent law, and therefore, the judicially created doctrine of nonstatutory double patenting is ultra vires."⁷

The PTAB acknowledged that OTDP is a judicially created doctrine but declined "to retire a doctrine upheld by our reviewing court," i.e., the U.S. Court of Appeals for the Federal Circuit.⁸ SawStop appealed the PTAB's decision, and the Federal Circuit affirmed without opinion pursuant to Federal Circuit Rule 36.⁹

Raising similar arguments, SawStop now petitions the Supreme Court "to resolve the question of whether the...