Supreme Court Grants Certiorari to Resolve Long-Running Debate on Assignor Estoppel

By: David G. Barker and Emily R. Parker Last Friday, the U.S. Supreme Court granted certiorari in Minerva Surgical v. Hologic, thereby agreeing to resolve a long-running debate on patent law’s doctrine of assignor estoppel. Minerva Surgical has asked the Court to abolish the doctrine, which bars inventors who sell their patent rights from challenging the patent’s validity in district court. The inventor in this case, Csaba Truckai, co-founded a company called NovaCept and developed two patents for endometrial ablation, a surgical process used to treat menstrual bleeding. NovaCept sold its patents to Cytyc Corp., which was acquired by Hologic.   Read More »

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IPRs Terminated by PTAB After Petitioner Failed to Name Client as RPI

By Anne Bolamperti and David G. Barker In RPX Corp. v. Applications in Internet Time LLC, the Patent Trial and Appeal Board (“PTAB”) held in a precedential opinion that three inter partes reviews (“IPRs”) were time-barred under 35 U.S.C. § 315(b) because the petitioner, RPX Corp. (“RPX”), failed to name its client Salesforce.com (“Salesforce”) as a real party in interest (“RPI”) in the proceedings. One of RPX’s business solutions is “to file IPRs where its clients have been sued by non-practicing entities.” RPX filed the IPRs against Applications in Internet Time LLC’s (“AIT’s”) regulatory monitoring patents (US 8,484,111 B2 and US 7,356,482 B2). AIT   Read More »

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Supreme Court Grants Certiorari to Decide if PTAB Judges Are Constitutional

By Alysha Green and David G. Barker Are PTAB judges constitutional? This week the Supreme Court granted certiorari to answer this question. In Arthrex v. Smith & Nephew, the Federal Circuit considered whether the appointment of administrative patent judges violates the Appointments Clause of the Constitution. The Appointments Clause requires the president to appoint principal officers, who then must be confirmed by the Senate before taking office. In contrast, inferior officers can be appointed by heads of departments (like the Secretary of State or Commerce). This system of appointment accounts for the different levels of authority principal and inferior officers   Read More »

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Vibrations at the Federal Circuit: American Axle and the “New” “Nothing More” Test of Patent Subject Matter Eligibility

By Daniel M. Staren and David G. Barker The Federal Circuit’s recent decisions in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC have not clarified the standard for patent eligibility under 35 U.S.C. § 101 (see a previous analysis of § 101’s unpredictability here). In this case, significant differences among Federal Circuit judges turned on whether a patent claim that invokes a natural law, and nothing else, to accomplish a desired result is patent eligible under Section 101. Despite strong dissents regarding this “nothing more” test, the original and modified panel opinions and the 6-6 order denying rehearing en   Read More »

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Supreme Court Holds PTAB Decisions on IPR Time Limit Nonappealable

By Anne Bolamperti and David G. Barker Yesterday, in Thryv, Inc. v. Click-To-Call Technologies LP, the Supreme Court held that Patent Trial and Appeal Board (“PTAB”) decisions regarding the time limit for filing inter partes reviews (“IPRs”) are not subject to judicial review. Thryv filed an IPR against Click-To-Call’s patent for anonymous telephone call technology. Click-to-Call argued the IPR was untimely because it was filed outside the one-year limit in 35 U.S.C. § 315(b). The PTAB nonetheless instituted the IPR and invalidated 13 patent claims. On appeal, the Federal Circuit ultimately held the IPR was time barred and vacated the PTAB’s decision with   Read More »

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