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 »

Posted in Patent Litigation | Tagged , , ,

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Google v. Oracle Heads to the Supreme Court

By Andy Halaby The Supreme Court’s cert grant on the Federal Circuit’s most recent decision in the long-running and highly publicized battle between Oracle and Google appears to confront policy questions as much as legal ones — such as whether the nation’s economy would be better or worse off, and under what circumstances, allowing software developers to copy others’ application programming interfaces without paying for them.  That the Court granted cert, notwithstanding the Solicitor General’s urging it not too, suggests the Court may be prepared to tackle those questions. Google’s petition challenges the Federal Circuit’s determinations that •  certain of   Read More »

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

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