“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
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
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?
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.