On October 13, 2020, the Supreme Court granted petitions for certiorari filed by the United States (in No. 19-1434), Smith & Nephew, Inc. (in No. 19-1452), and Arthrex, Inc. (in No. 19-1458) regarding the appointments of the administrative patent judges of the Patent Trial and Appeal Board.  No date has been set to argue the cases, but the Court consolidated them and allotted one hour for argument time.  Because the Court consolidated the cases for briefing and oral argument, it noted that “future filings and activity in the cases will now be reflected on the docket of No. 19-1434.”

The various petitions were granted only to the extent of “Questions 1 and 2 as set forth in the July 22, 2020 Memorandum for the United States.”  See Orders List at 2.

Question 1 asks “[w]hether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.”

Question 2 asks “[w]hether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.”

Links to the briefs, and details of the briefing schedule, are below.
Continue Reading Supreme Court grants certiorari in PTAB Appointments Clause cases

On June 10, 2019, the Supreme Court held that a federal agency is not a “person” who can file a petition for review of a patent under one of the three new proceedings created by the America Invents Act (“AIA”).  Return Mail, Inc. v. United States Postal Service, 587 U.S. ____, 2019 WL 2412904, at *3 (U.S. June 10, 2019) (“Return Mail“).  Specifically, the Court held that federal agencies cannot file a petition for inter partes, post-grant, or covered business method review with the Patent Trial and Appeal Board (“PTAB”) (collectively, “PTAB proceedings”).  Id.
Continue Reading Supreme Court Prevents the Government from Challenging Patents in PTAB Proceedings

The “on-sale bar” deems that certain sales of an invention that occur more than one year before a patent application is filed are a bar to patentability.  See 35 U.S.C. § 102(b) (pre-America Invents Act (“AIA”)); 35 U.S.C. § 102(a)(1) (AIA).  On Monday, June 25, 2018, the Supreme Court granted Helsinn’s petition for certiorari in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., to interpret the on-sale bar provision of 35 U.S.C. § 102 in the AIA.  Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., — S. Ct. —, 2018 WL 1142984 (2018) [SCOTUSblog case file].  The question presented to the Supreme Court is: “Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.”  Petition for Certiorari, Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., No. 17-1229, 2018 WL 1168243 (Feb. 28, 2018).

Continue Reading Did the AIA Change the On-Sale Bar Standard? The Supreme Court Will Decide.

On April 24, 2018, the Supreme Court held that the inter partes review (IPR) process, used by the Patent Trial and Appeal Board (PTAB) to reconsider the patentability of claims in an already-issued patent, does not violate Article III or the Seventh Amendment to the Constitution.  Oil States Energy Servs., LLC v. Greene’s Energy Grp., No. 16-712, slip op. (U.S. Apr. 24, 2018) (Supreme Court link).

Following an IPR, the PTAB ruled claims of an Oil States patent were unpatentable.  In its appeal of the PTAB ruling, Oil States argued that IPR proceedings are unconstitutional because actions to revoke a patent must be tried in an Article III court before a jury.  After the Federal Circuit summarily affirmed the PTAB’s decision, Oil States appealed to the Supreme Court, and the Supreme Court affirmed the Federal Circuit.


Continue Reading Supreme Court Affirms Constitutionality of Inter Partes Review in Oil States Energy Servs., LLC v. Greene’s Energy Grp.

On April 24, 2018, the Supreme Court held that the Patent Trial and Appeal Board (“PTAB”) must address all challenged claims of an instituted Petition in a final written decision. SAS Inst. Inc. v. Iancu, Dir. U.S. Pat. & Trademark Off., No. 16-969, slip op. (U.S. Apr. 24, 2018).  By way of background, in its Petition for inter partes review (“IPR”), SAS sought review of all the claims of ComplementSoft’s software patent.  During the IPR proceedings, the PTAB instituted review on some of the claims, relying on a Patent Office regulation that allowed for “partial institution.”  The PTAB held seven of those claims unpatentable and confirmed the patentability of one claim.  SAS argued to the Federal Circuit on appeal that the patent statute required the PTAB to address all challenged claims in its final written decision.  The Federal Circuit rejected that argument and the Supreme Court granted certiorari.  The Supreme Court disagreed with the Federal Circuit and held that all challenged claims must be addressed in an instituted IPR’s final written decision.  Id.

Continue Reading Supreme Court holds that when PTAB institutes an inter partes review, it must decide patentability of all challenged claims