is an Associate with Amster Rothstein & Ebenstein LLP. Ms. Hudak works in all areas of intellectual property law, including patents, trademarks, copyrights, and unfair competition. She has been involved in numerous ARE litigation matters with responsibilities including developing strategies and defenses, analyzing prior art, managing document review, and drafting motions and pleadings. Her areas of focus in patent law include subject matter eligibility under 35 U.S.C. § 101, invalidity based on prior knowledge or use, and divided infringement. She prepares and prosecutes patent applications in a wide range of technologies, including financial services, internet marketing, consumer products, and therapeutic agents. She also assists clients in post-grant proceedings before the U.S. Patent and Trademark Office, such as, inter partes reviews and covered business method reviews.
For more information or to contact Ms. Hudak, please visit her Firm Profile Page.
In this regard, a PTAB proceeding is not a suit in court, but instead an administrative proceeding in which the Patent Office (through the PTAB) takes “a second look at an earlier administrative grant of a patent.” Cuozzo, 136 S. Ct. at 2144 (2016); see also Oil States, slip op. at 7 (“[T]he decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration.”). Like other administrative actions in which States and Federal Agencies (e.g., the Federal Power Commission) may regulate rights or responsibilities of Tribes with respect to off-reservation activities, a PTAB proceeding is one of the “other mechanisms” available to the USPTO to resolve questions of patent validity as the administrative authority granting the patent in the first instance. Cf. Michigan v. Bay Mills Indian Cmty., 134 S. Ct. 2024, 2028 (2014).Even if the Tribe cannot be compelled to participate in this proceeding, the PTAB retains authority to adjudicate the validity of patents under review. Indeed, there is no requirement under the AIA that a patent owner participate in a proceeding in order for it to proceed.
The motion of the St. Regis Mohawk Tribe (“the Tribe”) is based on the misplaced theory that Tribal Sovereign Immunity is applicable to administrative proceedings before the PTAB. While the Supreme Court has repeatedly confirmed that, as a matter of judicial construct, Native American Tribes (like the Tribe) can be immune from “suits” in a court absent abrogation or waiver (see Paper 81, at 8), such immunity does not extend to all government action. See, e.g., Kiowa Tribe of Okla. v. Mfg. Techs., Inc., 523 U.S. 751, 755 (1998). In this regard, a PTAB proceeding is not a “suit” in court, but instead an administrative proceeding in which the Office (through the PTAB) takes “a second look at an earlier administrative grant of a patent.” Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (“Cuozzo”).
On April 13, 2017, Broadband iTV, Inc. (“BBiTV”) filed a petition for a writ of certiorari with the Supreme Court of the United States, requesting that the Court to take the case to resolve three recurring issues relating to patent-eligibility and the procedure by which courts analyze patent-eligibility… BBiTV appeals from the Federal Circuit’s Rule 36 affirmance of two summary judgment decisions in which the district court found claims of U.S. Patent No. 7,631,336, entitled “Method for converting, navigating and displaying video content uploaded from the internet to a digital TV video-on-demand platform,” to be directed to the abstract idea of “using the same hierarchical ordering based on metadata to facilitate the display and locating of video content.” Amicus briefs in support of the Petition are due by May 15, 2017.
Versata presented four questions to the Supreme Court, some very specific to CBM proceedings. In its amicus brief, Broadband iTV more generally asks the Supreme Court to revisit its patent-eligibility precedents, and clarify how computer-implemented claims can be found patent-eligible under Alice to correct the ongoing misapplication of Alice in the lower courts and by the PTAB. Since Alice, more than 100 patents and thousands of claims have been declared invalid under 35 U.S.C. § 101 by the lower courts or PTAB using an overly broad interpretation of Alice. Thus, it is important for this Court to take up the issue of patent-eligibility once again and right the course.