IP Law Bulletin

Late last week, the Federal Circuit issued Power Integrations, Inc. v. Semiconductor Components Indus., LLC and Regents of the Univ. of Minnesota v. LSI Corp. These two precedential decisions bring further clarity to who is subject to the time bar for filing petitions for inter partes review (“IPR) and whether sovereign immunity protects patents from being subject to IPR challenges. The key takeaways are:

1. Consider the impact of mergers and acquisitions on IPR petitions, including those that have already been filed; and
2. Patents owned by states (including, state universities and research institutions) can be challenged in an IPR.

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and ready for oral argument when the Court reconvenes for a new term in October. To mark the end of this term, here’s a list of 5 Patent Law Petitions to Watch at the Supreme Court as we look ahead to 2019-2020.

On March 7, 2019, the Patent Trial and Appeal Board (PTAB) designated the decision in Lectrosonics, Inc. v. Zaxcom as precedential. The order provides guidance and information on practice surrounding a patent owner’s motion to amend during an Inter Partes Review (IPR), in light of Federal Circuit case law. Generally, in an IPR proceeding, the patent owner may file one motion to amend the patent to (a) cancel any challenged patent claim and (b) for each challenged claim, propose a reasonable number of substitute claims. 35 USC 316(d)(1). This decision replaces Western Digital Corp. v. SPEX Techs, Inc., and provides further guidance on the scope of proposed substitute claims and the right of a petitioner to submit evidence during the IPR amendment cycle.

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC to decide whether the AIA (America Invents Act) patent review program for challenging the validity of issued patents is constitutional. Specifically, the Court will decide the question of “whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

Almost a decade has elapsed since the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc. altered the law of patent obviousness. In reversing the judgment of the Federal Circuit, the Court in KSR limited the “teaching, suggestion, motivation” test and loosened the standards that both courts and the USPTO use to assess validity under 35 U.S.C. § 103. In particular, the Court expressly rejected the application of any inflexible obviousness rule that excluded consideration of, among other things, common sense.

The Federal Circuit, however, recently confirmed that common sense alone cannot suffice to establish obviousness. In Arendi S.A.R.L. v. Apple, Inc., the court held that the Patent Trial and Appeal Board (the PTAB) erred when it used common sense to supply a missing limitation in the prior art to arrive at the claimed invention. Not only is this case surprising in that factual findings of the PTAB are rarely overturned on appeal, but it also marks some constraints on the broad obviousness standard articulated in KSR.

To date, the Supreme Court has granted certiorari (commonly referred to as cert) to five patent-related cases this term, which will result in three oral arguments likely to be decided before the end of the term. Two of the cases were consolidated into a single argument, while another case was subject to a Grant-Vacate-and-Remand (GVR) order, meaning the previous decision by the United States Court of Appeals for the Federal Circuit (CAFC) has been vacated by the Supreme Court and the case must be reconsidered by the CAFC. There are also over 20 pending Petitions for Writ of Certiorari, which may result in additional patent matters being heard by the Court this term.

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a set of proposed rule changes that affect the post-issuance patent review proceedings governed by the Patent Trial and Appeal Board (PTAB). As noted in a blog post announcing the release, this is the second iteration of rule changes concerning the America Invents Act (AIA)-created inter partes review (IPR), post-grant review (PGR), and transitional program for covered business method patents (CBM)—the first included a few “quick fixes” enacted earlier this year. While the proposed changes have no effect until a final rulemaking in the future, the USPTO encourages practitioners to review the developments and, if inspired, participate in the comment period that is open until October 19, 2015.