On Monday, the justices ruled 5-4 that the “unreviewable authority” of administrative patent judges meant those APJs were appointed in violation of the Constitution’s appointments clause. The justices then ruled 7-2 that the...more
6/25/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
The Supreme Court ruled Monday that more than 200 administrative patent judges in the U.S. Patent and Trademark Office must be subject to greater supervision by the agency director in order to comply with the Constitution’s...more
On April 22, 2021, the Supreme Court decided Carr v. Saul, a case with interesting parallels to Arthrex, which deals with appointments clause challenges to the PTAB judges and which will be decided later this Term. In Carr,...more
On Monday, the justices heard 90 minutes of argument in United States v. Arthrex, Inc. and two consolidated cases about whether hundreds of administrative patent judges of the U.S. Patent and Trademark Office are “principal...more
The justices continue their light load for the February argument session next week. First up is Monday’s United States v. Arthrex, Inc., consolidated with both Smith & Nephew, Inc. v. Arthrex, Inc. and Arthrex, Inc. v. Smith...more
3/1/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Arthrex filed its reply brief on February 19th, submitting what will be the final word in the case until oral arguments are presented next week. In its reply, Arthrex seeks to shore up its own arguments while rebutting the...more
Smith & Nephew and the United States filed their reply briefs on January 22. In its reply brief, the United States rebuts many of the positions taken by Arthrex in its initial merits brief. While Smith & Nephew, in its reply,...more
Opening briefs from Smith & Nephew and the United States have been filed with the Supreme Court in the Arthrex cases which, as previously discussed, granted the petitions for certiorari from Arthrex, Inc., Smith & Nephew...more
On October 20, 2020, the PTO published in the Federal Register a request for comments about whether it should embark on a formal notice-and-comment rulemaking process directed to how the PTAB exercises its discretion in...more
The U.S. Supreme Court will hear a case that has dramatic and sweeping implications for proceedings before the Patent Trial and Appeal Board (PTAB). On October 13, 2020, the Supreme Court granted three petitions for writ of...more
Covered business method (CBM) review is scheduled to end on September 15 this year. Part of the Leahy-Smith American Invents Act, CBM review was envisioned as a transitional tool for accused infringers to challenge weak...more
The United States Patent and Trademark Office (USPTO) has now announced how it will exercise its authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain statutory deadlines. Unlike...more
To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more
1/23/2020
/ America Invents Act ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
PTAB Precedential Opinion Panel (POP) ,
Real Party in Interest ,
USPTO
In a short opinion issued on December 11, 2019, the Supreme Court rejected the PTO’s recent attempt to collect attorneys’ fees under a little-used provision of the Patent Act. The decision in Peter v. NantKwest (No. 18-801)...more
12/13/2019
/ American Rule ,
Attorney's Fees ,
Civil Claims ,
Corporate Counsel ,
Fee-Shifting ,
Litigation Fees & Costs ,
Patent Act ,
Patent Applicants ,
Peter v NantKwest Inc ,
Prevailing Party ,
Remedies ,
SCOTUS ,
Section 145 ,
Trademarks ,
USPTO
With the Supreme Court in Oil States v. Greene’s Energy holding IPRs constitutional under Article III, and the Federal Circuit in Celgene v. Peter holding the retroactive use of IPRs against pre-AIA patents not to be an...more
11/4/2019
/ America Invents Act ,
Appointments Clause ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Takings Clause ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well. These decisions confirm...more
As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more
5/10/2018
/ Administrative Procedure ,
America Invents Act ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Partial Institution ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
On April 24, 2018, the Supreme Court issued its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712, affirming the constitutionality of the U.S. Patent and Trademark Office’s (PTO) inter...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
On April 24, 2018, the Supreme Court issued its opinion in SAS Institute Inc. v. Iancu, No. 16-969, holding that when the U. S. Patent and Trademark Office (PTO) institutes an inter partes review (IPR), it must decide the...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO