Posts Tagged: "inter partes"

The State of the U.S. Patent System: From Oil States to Patent Eligibility

One week ago, the United States Supreme Court issued two decisions pertaining to inter partes review (IPR) challenges at the Patent Trial and Appeal Board (PTAB). Meanwhile, the United States Patent and Trademark Office has issued fresh patent eligibility guidance thanks to the Federal Circuit’s recent decision in Berkheimer v. HP. Join Gene Quinn and Todd Dickinson, former USPTO Director and current Senior Partner at Polsinelli, on Thursday, May 3, 2018, at 12pm EST, for a free webinar.

Control Over District Court Litigation is Required for Time Bar Under 35 U.S.C. § 315(b)

An IPR petition is not time-barred for reasons of privity with a district court defendant in a prior litigation when no evidence shows that the petitioner controlled the litigation and would be bound by its outcome, or was in privity with a litigant for other reasons. It is not enough for the petitioner to indemnify litigants or have an interest in the outcome. Similarly, for a district court defendant to be a real party in interest in an IPR, the petitioner must have filed the petition at the behest or on behalf of the defendant. Finally, it was not an abuse of discretion to deny Patent Owner’s motion for additional discovery, when the requested discovery would not prove privity on the grounds alleged in the motion.

Reflections on Oil States: Are There Silver Linings Amidst the Doom and Gloom?

That being said, and following up on the feeling of “doom and gloom” many of us had upon initial issuance of the Oil States decision, there is some reason for hope here in at least reigning in some of the impact of IPRs. The majority opinion concludes by “emphasiz[ing] the narrowness of [its] holding,” i.e., it only addresses the 7th Amendment and Article III challenges. Or as I’ve characterized this portion of the majority opinion, it suggests the wrong questions were asked by Oil States. Instead, it suggests Oil States should have asked the following questions: (1) was retroactive application of IPRs proper, even though that procedure was not in place when Oil States’ patent issued?; and (2) may IPRs be challenged on “due process” and “takings clause” grounds (stating that “our decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause”). With reference to the second question, note in particular that the majority cited the Florida Prepaid case which relates to 11th Amendment sovereign immunity of the states and their institutions. That citation has direct implications in the University of Minnesota’s appeal to the Federal Circuit of PTAB’s ruling (wrong in my view and others) in the Ericsson decision that state institutions (such as state universities) waive their 11th Amendment sovereign immunity in IPRs if they have brought a separate patent infringement suit in federal district court.

Supreme Court Holds PTAB Must Decide Validity of All Challenged Claims in IPRs

As in civil litigation, the petitioner in an inter partes review is master of its complaint and is “normally entitled to judgment on all of the claims it raises, not just those the decisionmaker might wish to address.” Therefore, the Board must decide the validity of every challenged claim when it agrees to institute inter partes review of any one challenged claim.

Despite Oil States, Inter Partes Review May Still Be Held Unconstitutional

Oil States v Greene’s Energy, 584 U.S. ___ (2018), just decided that patents are a public right, a franchise right, akin to a right to erect a toll bridge, and not personal property (slip op. at 9).  What was unfortunately never addressed in Oil States, and which the court specifically left the door open for, was that patents rights are still property rights for the purpose of Due Process–the inference being that IPRs may fail under the Due Process or Takings Clause.  Indeed the court seemed to lament that Oil States did not challenge the retroactive application of IPRs and their constitutional sufficiency on a broader basis.