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 »

Posted in Patent Litigation, Post Grant Proceedings | Tagged , ,

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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 »

Posted in Patent Litigation | Tagged , , ,

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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 »

Posted in Patent Litigation, Post Grant Proceedings | Tagged , , ,

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Supreme Court Holds “Expenses” Exclude PTO Employee Salaries in Civil Action Challenges Under the Patent Act

By Daniel M. Staren and David G. Barker The Supreme Court unanimously held that the United States Patent and Trademark Office (PTO) may not recover the salaries of its legal personnel as “expenses” in a civil action challenging an adverse decision by the PTO under the Patent Act. The Court’s decision in Peter v. NantKwest affirmed a Federal Circuit en banc decision that premised its holding on the American Rule, which provides that each litigant is responsible for its own attorneys’ fees unless a statute or contract provides otherwise. NantKwest owned a patent application directed to a method for treating   Read More »

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Solicitor General Weighs in on Section 101, Prompts High Court to Grant Review in Athena Diagnostics v. Mayo Collaborative Services

By Andy Halaby At the Supreme Court’s request, the Solicitor General on Friday, December 6, weighed in on two pending cert petitions dealing with patent subject matter eligibility under 35 U.S.C. § 101.  Though the Solicitor General urged on behalf the United States that both those cert petitions be denied, he seized the opportunity, in both briefs, to maintain that the Supreme Court should accept review in yet another case, Athena Diagnostics v. Mayo Collaborative Services, and use that opportunity to straighten out what the Solicitor General maintains is a recent, deviant strain of Court decisions interpreting § 101. In   Read More »

Posted in IP and Technology Litigation, Patent Litigation | Tagged , ,

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