Supreme Court to Review Important IPR Questions

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Supreme Court granted Cuozzo’s Petition for Certiorari regarding two important questions affecting post-grant reviews:

1. Whether the Court of Appeals erred in holding that in proceedings, the Board may construe claims of an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the Court of Appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR Proceeding is judicially unreviewable.

Cuozzo received support from 3M Company, Bristol-Myers Squibb Co., Cargill Incorporated, Caterpillar Inc., Eli Lilly and Company, GlaxoSmithKline LLC, Illinois Tool Works Inc., Johnson & Johnson, Monsanto Company, Pfizer Inc., The Procter & Gamble Company, Qualcomm Incorporated and Sanofi US filed an amici curiae brief, as did the Biotechnology Industry Organization, the American Intellectual Property Law Association, The Pharmaceutical Research And Manufacturers America,  Intellectual Property Owners Association, The Intellectual Property Law Association of Chicago, New York Intellectual Property Law Association, Interdigital, Inc., Tessera Technologies, Inc., and Fallbrook Technologies, Inc. and Trading Technologies International, Inc.

These are both important questions.  With respect to the use of BRI in post grant proceedings, the USPTO’s use of this examination standard where the patent owner is essentially disabled from amending the claims is unfair.  With respect to reviewing institution decisions, it would be remarkable that a decision by the PTAB or any government agency could be completely immune from review, no matter how contrary to the statute.

January 15 Patent of the Day

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On January 15, 1861, Elisha Graves Otis received U.S. Patent No. 31,128 on a Hoisting Apparatus (an elevator, to non patent attorneys).

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His achievement was not so much the lifting people and things — this had been done for some time — but providing a brake so that if the rope snapped, the passengers wouldn’t plunge to their deaths (ironic for a man whose middle name was Graves).

 

 

 

Just Because You Can, Doesn’t Mean You Should

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In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB did not err in finding the claims obvious.

The Federal Circuit held that neither the statute nor the Constitution precludes the same panel of the Board that made the decision to institute inter partes review from making the final determination, rejecting Ethicon’s challenge that this process raises “serious due process concerns.”  The Federal Circuit said that combining the decision to institute with the final decision in a single panel is less problematic than other procedures approved by the Supreme Court. The Federal Circuit said that both the decision to institute and the final decision are adjudicatory decisions that do not involve combining investigative and/or prosecutorial functions with an adjudicatory function, and found the procedure directly analogous to a district court determining whether there is “a likelihood of success on the merits” and then later deciding the merits of a case.

Even if not Constitutionally infirm, a procedure that requires a panel of the Board to decide to institute without receiving evidence from the patent owner, and then deciding whether they were wrong does seem to be biased against the Patent Owner.  The USPTO proposed a pilot program, under which an IPR trial will be conducted by a panel of three APJs, two of whom were not involved in the determination to institute the IPR.  The USPTO published a request for comments in the Federal Register on August 25, 2015, seeking public comment on the proposed pilot program, and the comment deadline was later extended to November 18, 2015.  The AIPLA weighed-in in favor of the change, noting that it would remove the actual or perceived bias in the process.

January 13 Patent of the Day

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On January 13, 1943, Henry Ford was granted U.S. Patent Nos. 2,269,451 and 2,269,452 on the construction of a plastic automobile.

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Ford hoped to make automobiles from renewable agricultural plastic panels of soybean and hemp, developed by George Washington Carver.  World War II brought automobile production to a halt, and after the war interest in the car waned.

January 12

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On January 12, 1960, Arnold Junker, was issued U.S. Patent No. 2,920,841 on a Helicopter with Body Attaching Means.

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Perhaps the most remarkable thing about the patent is how happy the test subject looks facing certain doom.

January 11

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On January 11, 1994, Elaine Rossignol and Michael Kominsky obtained U.S. Patent No. 5,277,148 on the Wearable Pet Enclosure.  This was significant because it allowed crazy cat people to become mobile.

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January 10

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On January 10, 1843, Charles T. Sage obtained U.S. Patent No. 2,906 on a syringe, much to the chagrin of enetophobics everywhere.  Sage used the syringe to cure hernias, which is even scarier.

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January 9

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On January 9, 1979, U.S. Patent No. 4,133,315 issued to Edward J. Berman and George A. Rowe for a Method and Apparatus for Reducing Obesity.  Ed and George inflate a bag in your stomach to make you feel full.  There has to be a better way to keep your New Year’s resolutions.

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