Supreme Court Determines New Limitations to Assignor Estoppel Doctrine

By Marsha Cotton and David G. Barker The Supreme Court upheld assignor estoppel in Minerva Surgical, Inc. v. Hologic, Inc., et al. but held that the Federal Circuit “failed to recognize the doctrine’s proper limits.” In doing so, the Court imposed new limitations on when the equitable doctrine applies in a patent case. The Court did away with the bright-line rule that any time an inventor assigns a patent, he or she cannot later argue that the patent is invalid. Previously, courts applied the rule without looking to the individual facts and circumstances in each case. But the Court held   Read More »

Posted in IP and Technology Litigation, Patent Litigation, Post Grant Proceedings | Tagged , ,

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Supreme Court Holds that PTAB Judges Are Unconstitutionally Appointed

By Daniel M. Staren and David G. Barker The Supreme Court held this week that the United States Patent and Trademark Office’s (“USPTO”) appointment of Patent Trial and Appeal Board (“PTAB”) judges cannot be constitutionally enforced because the USPTO director does not have authority to review final PTAB decisions. Smith & Nephew, Inc. and ArthroCare Corp. petitioned for inter partes review in the USPTO against Arthrex, Inc.’s patent on a surgical device. A PTAB panel consisting of three administrative patent judges (“APJs”) concluded that Arthrex’s patent was invalid. On appeal, the Federal Circuit determined that the appointment of APJs violated   Read More »

Posted in Inter Partes Review, Patent Litigation, Post Grant Proceedings | Tagged , ,

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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 »

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

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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 »

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

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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 »

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

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