Masters Offer Hope for Patents Despite Current Challenges

By IPWatchdog
March 17, 2020

“Possible solutions posed included adding a layer of judges between the PTAB and Federal Circuit for reviewing PTAB decisions. However, the Masters agreed that there does not appear to be a feasible solution at this time.”

Experts speaking during IPWatchdog’s Virtual Patent Masters Symposium yesterday expressed concern over the state of the U.S. patent system, but also offered a number of solutions, and many took a cautiously optimistic outlook for the future.

Infringement, Injunctions and the CAFC

Bob Stoll March 16, 2020

Bob Stoll, former Commissioner for Patents and partner at Faegre Drinker Biddle listens intently to Ted Essex.

In one session, Patent Masters Q. Todd Dickinson of Polsinelli, Judge Theodore Essex of Hogan Lovells, Retired Chief Judge Paul Michel, and Robert Stoll of Drinker Biddle discussed the Supreme Court case eBay Inc. v. MercExchange, wherein the former bright line rule of issuing permanent injunctions was replaced by a four-factor test according to familiar rules of equity that apply to all areas of law. While the consensus among the Masters was that eBay has created a multitude of problems, Judge Michel pointed out that eBay has been misinterpreted by the district courts. He explained that the concurring opinion of Justice Kennedy, which suggested that injunctions should not normally be available to patent owners who are not practicing the patented invention, has been applied by the lower courts as if it were a majority opinion. The majority opinion did not say that injunctions should not be granted, but rather that the four-factor test should apply to patent injunctions as it does to other injunctions. Michel noted that, without permanent injunctions, the result is essentially a compulsory license, which is the opposite of the right to exclude. The judge further stated that “out of concern for speculation of possibility of holdup we turned the injunctive system upside down and removed all leverage for the patent owner, which has been …[a] primary cause of the virtual collapse of patent incentive to invest, invent, commercialize and produce.” The Masters agreed with Michel but noted that it is unlikely that anything will change in the foreseeable future.

The Role of the PTAB

Jim Carmichael March 16, 2020

James Carmichael at IPWatchdog on March 16, 2020.

Another session focused on “The Role of the PTAB Today” and included Patent Masters Jim Carmichael of Carmichael IP, Scott McKeown of Ropes & Gray, and Rob Sterne of Sterne Kessler Goldstein & Fox. During the session, the Masters discussed Arthrex v. Smith & Nephew, Inc, which essentially made Patent Trial and Appeal Board  (PTAB) judges “inferior officers” under the U.S. Appointments Clause, and its effects on the PTAB. The Masters noted that, although the PTAB has been referred to as the “most important patent court in the country”, Arthrex limits that power. One Master said that Arthrex is troubling for PTAB judges given that they have no union protection and that there has been a notable drop in PTAB filings. The discussion also focused on the lack of meaningful review of PTAB decisions by the Federal Circuit. Possible solutions posed included adding a layer of judges between the PTAB and Federal Circuit for reviewing PTAB decisions. However, the Masters agreed that there does not appear to be a feasible solution at this time.

Another problematic issue addressed during this panel was the different standards applied by the district courts and the PTAB with respect to claim construction. Patent challengers presently are burdened by the different standards, i.e. clear and convincing vs. preponderance of evidence. The Masters agreed that it would make a big difference for patent owners if there was a consistent standard applied by the district courts and the PTAB.

Predicting 2020: Bullish or Bearish, and Why?

Virtual Patent Masters March 16, 2020

Virtual Patent Masters in the studio on March 16, 2020. Top L to R: Patrick Kilbride, Bob Stoll and Jim Carmichael. Front: John White, Ted Essex and Scott McKeown.

In a wrap up session titled “Predicting 2020: Bullish or Bearish, and Why?”, the Masters from all the sessions came together and discussed whether they felt the patent landscape of 2020 was bullish or bearish. This question also was addressed in an IPWatchdog article last month, in which all respondents replied “bullish.” Similarly, the majority of the Masters yesterday also felt bullish, and noted a number of bright spots ahead. One Master said that we will likely start to see courts moving in the right direction, and further emphasized that patent practitioners will find ways to do what they can to protect their clients’ best interests.

IPWatchdog’s Virtual Patent Masters Program was held and offered free of charge in light of the postponement of CON2020, which was scheduled to take place in Dallas, Texas this week, due to the COVID-19 pandemic. Yesterday’s event also featured two sessions with Assistant Attorney General for the Antitrust Division at the U.S. Department of Justice, Makan Delrahim.

The live version of CON2020 has been rescheduled for September 13-15 in Dallas.

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IPWatchdog

IPWatchdog

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Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Chrissy Disch March 17, 2020 2:27 pm

    Will there be a replay or stream of this Symposium available?

  2. Gene Quinn March 17, 2020 3:27 pm

    Chrissy-

    Yes, we will be placing the recording in our archive later on this week. The file is quiet large and will take some editing. Stay tuned.

    -Gene

  3. Pro Say March 17, 2020 3:38 pm

    The only thing worse for American innovation than the Death Squad PTAB?

    The unconstitutional Death Squad PTAB.

    Congress: This greatest mistake of the AIA need to be abolished.

    It’s long past time for our formally-innovation-leading Country to go back to real courts, with real judges, with real juries.

  4. Night Writer March 18, 2020 8:13 am

    @Gene, et al.

    Thanks! You are the last bulkhead before the complete sinking of the USS Patent Right.

    I have not met a single person on the other side of the issue, i.e., those that would like to end the patent right, who seem to me to be intellectually honest. They all appear to be either ignorant or bought off. I don’t even like socializing with them.

  5. jacek March 18, 2020 12:40 pm

    Hope? What are the real fundamentals for the Hope? Because things got so bad to the point of no return?
    Plus, the world around moved already ahead a million light-years ahead.
    For example. When we are looking at the Hague “Industrial design Registration.”, where we can have instant protection in 90 countries (Without seeing a lawyer) and then at the US Design Patent, is hard not to have a feeling that we are living in times of Dinosaurs here in the US.

  6. Anon March 21, 2020 10:30 am

    I am not sure that the global pandemic will leave anything bullish for the year 2020.

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