Government Intervenes to Thwart Arthrex Remands

As expected, the government has informed the Federal Circuit of its intention to seek en banc rehearing in Arthrex Inc. v. Smith & Nephew, Inc.  Having intervened in a number of cases seeking remand post-Arthrex the government has now moved to stay these proceedings pending its en banc petition. Continue Reading Government Indicates En Banc Petition Forthcoming for Arthrex

Orders Stave Off Further Remands….For Now

During last week’s argument in Polaris, appellant argued that the Court’s fix to the PTAB’s Appointments Clause problem was insufficient. According to appellant, “reviewability” is the touchstone of recent Appointments Clause precedent, and that as the proposed fix did not address the lack of reviewability over APJ decisions (because the Federal Circuit could not), it was up to Congress to fix.  During that same hearing, the Court contemplated additional briefing on this topic, which it recently solicited from the parties.

In the meantime, learning from its mistake in its recent Uniloc remand, the Federal Circuit is now allowing time for the government to intervene in parties seeking remand after Arthrex (here) and (here). Continue Reading Lawmakers Consider Fix as CAFC Deals With PTAB Appointments Clause Fallout

Reasonably Could Have Raised & Reasonably Diligent

Prior to last year’s SAS decision, district courts split over whether non-petitioned grounds were embraced by the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) and 325(e)(2) estoppel.  However, a growing number of district courts post-SAS have construed this phrase to define grounds that a party could have included in its petition, but did not.  In doing so, the courts are also making clear that the burden of proving that a ground could have reasonably have been raised, lies with the Patent Owner. Continue Reading Courts Apply More Flexible Analysis to PTAB Estoppel

Appointments Clause Argument Forfeited if Not Raised in Opening Brief

With the ink barely dry on Thursday’s Federal Circuit ruling that the Administrative Patent Judges (APJs) of the Patent Trial & Appeal Board (PTAB) were unconstitutionally appointed, Appellant Notices of Supplemental Authority began to roll into the Court Friday morning.  For Appellants that had appropriately raised the issue in their opening brief to the Court, some were remanded to the PTAB (Uniloc 2017 LLC. v. Facebook Inc.).  Other such appeals were allowed to proceed to oral argument based, in part, on DOJ involvement. (such as today’s argument in Polaris Innovations Limited v Kingston Technology Co. Inc.)

For Appellants hoping to take advantage of the Appointments Clause development who had not briefed it, the Court found such arguments forfeited. Continue Reading CAFC Quickly Shuts Down Belated Appointments Clause Arguments

Well, that Escalated Quickly…

On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in  Arthrex Inc. v. Smith & Nephew, Inc.  The Court has vacated and remanded the decision, ordering  a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).

So, what does this mean for pending appeals? Continue Reading CAFC: PTAB Judges Operating in Violation of Appointments Clause

Supplemental Briefing Focuses on Remedies

As discussed last week, the Federal Circuit has requested supplemental briefing in Arthrex Inc. v. Smith & Nephew to assess how best to remedy a potential Appointments Clause violation.  The supplemental briefing has now been submitted.  While the Court deliberates whether it is appropriate to remand or vacate the Arthrex matter, the government’s brief and Appellee brief look to the potential impact in other PTAB appeals. Continue Reading CAFC Warned Hundreds of PTAB Appeals Potentially Subject to Appointments Clause Fallout

November Webinar to Focus on Appellate Hot Topics

The November edition of the webinar series will be held Monday, November 4th@ 2-3PM (EST). The November program will focus on emerging appellate issues expected to drive PTAB practice in the months ahead.

The webinar is entitled: PTAB Reset 2020: Appointments Clause Turmoil & Appellate Docket Recalibration.  Most notably, the webinar will explore the current Appointments Clause dilemma and its potential impact on current PTAB appeals, active PTAB litigants, and previously cancelled patent claims.  Other topics to be explored include the potential restriction of the PTAB appeal bar in Dex Media Inc. v. Click-to-Call Technologies, LP., application of 101 to PTAB amendments, and Article III standing challenges.

My co-presenters for this webinar will be Ropes & Gray’s Appellate & Supreme Court Practice Chair Doug Hallward-Driemeier and IP Litigation Partner Matthew Rizzolo.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the free webinar please sign up via the link below. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Free Registration: (here)

An Avalanche of FWD Do-Overs Imminent?

Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution.  In a nutshell, the argument is that PTAB Administrative Patent Judges (APJ) are “superior officers” delivering the final word of the government in PTAB trial proceedings.  And that, as such, APJ actions are unconstitutional since they are not political appointees confirmed by the U.S. Senate — as the Appointments Clause requires.

That argument found its way to the Federal Circuit earlier this month in Arthrex Inc. v. Smith & Nephew, Inc.  At oral argument, the Court probed the Director’s ability to remove APJs, and seemed concerned that this deficiency was enough to violate the Appointments Clause.  An Order issued last week for additional briefing appears to reinforce the expectation that the Court will find the APJs functioning in violation of the Appointments Clause.

Continue Reading Patent Owner Trick or Treat? – Appointments Clause Debate to Jolt PTAB

Burden of Persuasion to Demonstrate Unpatentability on Petitioner

The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings before the Patent Trial and Appeal Board (PTAB).  The NPRM proposes that a petitioner bears the burden to show the unpatentability of substitute claims proposed in a motion to amend; a patent owner bears the burden to show that a motion to amend complies with certain statutory and regulatory requirements; and the Board may, in the interests of justice, make a determination regarding the patentability of substitute claims based on the record in the proceeding regardless of the burdens assigned to any party.

The NPRM basically follows the en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), in which a majority of the judges concluded that the Office had not adopted a rule allocating the burden of persuasion with respect to the patentability of proposed substitute claims. In light of Aqua Products, as well as public comment provided in response to a Request for Comments, the Office proposes to issue specific rules applicable to motions to amend. Continue Reading Resolving AIA Amendment Burdens Unlikely to Move the Needle at the PTAB

Federal Gov’t & Federal Contractors in the Court of Federal Claims – A Legal Relationship?

Federal government contractors are protected from patent infringement suits when infringing activities are performed pursuant to a contract with the Federal Government. 28 U.S.C. § 1498(a).  Under § 1498, rather than sue such contractors directly in a Federal District Court, patentees must instead file a suit against the United States in the Court of Federal Claims.  Typically, contractors will intervene thereafter and become third party defendants.

When these contractors lodge IPR petitions with the PTAB, they often take the view that since they were never served with a “complaint for infringement,” that the one year anniversary of the 1498 complaint does not preclude such filings under 35 U.S.C. § 315(b).  But a recent case will explore the legal relationship of the Federal Government to its contractors, and whether at least a privity relationship exists for purposes of applying 315(b) to the complaint anniversary date. Continue Reading PTAB Considers RPI/Privy Relationship of Federal Gov’t in Related Court of Federal Claims Dispute