Amicus Brief on Behalf of Leading Technology and Life Sciences Companies Urges Federal Circuit to Reverse PTAB's Flawed Application of the Obviousness-Type Double Patenting Doctrine


2 minute read | May.04.2026

  • Canon, Inc., Nagra USA LLC, Nokia Corporation, RingCentral, Inc., Sonos, Inc., and Sutro Biopharma Inc. have filed an innovators’ amicus brief supporting patent applicants in the U.S. Court of Appeals for the Federal Circuit, arguing that the court should overturn the PTAB’s decision below and adopt a common-sense approach to the obviousness-type double patenting (ODP) doctrine.
  • The amicus effort, led by an Orrick team, argues that the judicially created ODP doctrine should be guided by its fundamental principles instead of interpreting caselaw in a formulaic way that leads to illogical results. The PTAB opinion stems from a patent examiner’s use of a patent with a later patent term filing date and a later expiration date as an ODP reference to reject an application with an earlier patent term filing date and an earlier expiration date. The PTAB later affirmed the examiner’s position. The PTAB’s opinion is contrary to Federal Circuit case law and the fundamental purpose of the ODP doctrine, which is intended to prevent unfair timewise extension of patent terms through the filing of later-filed, later-expiring applications. The opinion is also in direct conflict with a prior PTAB opinion, one that is currently under review by an Appeals Review Panel.
  • The brief focused on the destabilizing effects that the PTAB’s ODP rule could have on the innovation economy, including uncertainty in patent valuation, reduced willingness to engage in collaborative research, and an overall reduction in research and development investment. Instead, the brief urges the Federal Circuit to adopt clear rules based on the fundamental purpose of the ODP doctrine.
  • The Orrick team on the amicus effort is led by partners Irena Royzman and Clement Roberts, with support from Samantha Leff and Dana Sublett.