Supreme Court Will Consider Appealability Of The PTAB’s Section 315(b) One-Year Bar Rulings
On June 24, 2019, the United States Supreme Court granted certiorari to review whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) is an appealable decision.
Supreme Court Holds That Copyright Claimant Cannot Commence Litigation Until After Copyright Office Registers The Copyright
On Monday, March 4, 2019, the United States Supreme Court issued an opinion affirming a dismissal of the plaintiff’s copyright claim. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. ____ (2019). The Supreme Court held that a copyright plaintiff may not commence a lawsuit until after the Register of Copyrights officially registers the copyright.
Supreme Court Finds That The AIA Did Not Change Settled Pre-AIA Law That A “Secret” Sale May Trigger The On-Sale Bar
On January 22, 2019, the United States Supreme Court issued an opinion affirming a decision by the Court of Appeals for the Federal Circuit (CAFC) that the Leahy-Smith America Invents Act (AIA) did not change the “on sale” bar. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S., case no. 17-1229. The Supreme Court held that a commercial sale to a third party may still place the invention “on sale” under 35 U.S.C. § 102(a)(1) of the AIA, even if the third party was required to keep confidential the details of the invention.
Supreme Court Reverses Federal Circuit And Holds That Patent-Infringement Damages Suffered Overseas May Be Recoverable Under U.S. Patent Law
06/26/2018On June 22, 2018, the United States Supreme Court reversed the Court of Appeals for the Federal Circuit (CAFC) on the issue of whether damages suffered overseas can be recovered as remedy for infringement under the U.S. patent laws. WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ____, case no. 16-1011. The Supreme Court ruled that such damages can be recoverable.
US Supreme Court Approves IPRS, But Requires Decision On All Challenged Claims
On April 25, 2018, the United States Supreme Court ruled on two cases concerning inter partes review (“IPR”) proceedings: Oil States Energy Svcs. v. Green’s Energy Grp., case no. 16-712, and SAS Inst. Inc. v. Iancu, case no. 16-969. In the first case, the Court ruled that IPRs can be a Constitutionally permissible way for the Patent Office to revoke already-issued patents, and in the second case, the Court ruled that the Patent Office is required to rule on either all or none of the patent claims challenged in a request for IPR.
Supreme Court Hears Oral Argument In Key Patent Damages Case
On April 16, 2018, the United States Supreme Court heard oral argument in the case of WesternGeco LLC v. ION Geophysical Corporation, which presents the question whether a patent owner can recover damages suffered outside of the United States for infringing acts that occurred within the United States.
In Split Opinion, Federal Circuit Holds PTO Has Standing To Proceed Without Patent Challenger, As Sole Party Defending PTAB Inter Partes Invalidity Decision04/10/2018
On April 6, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming an examiner’s rejection of various patent claims in an inter partes reexamination. Knowles Elec. LLC v. Iancu, case no. 2016-1954. The United States Patent and Trademark Office (“PTO”) had intervened in the appeal to defend the examiner’s rejection. In its opinion, the CAFC ruled that the PTO had standing to defend the examiner’s rejection even though the petitioner in the inter partes reexamination had abandoned the appeal.
Federal Circuit Transfers Walker Process Appeal To Regional Circuit
On February 9, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) entered an order transferring the appeal in a Walker Process antitrust action to the United States Court of Appeals for the Fifth Circuit. Xitronix Corp. v. KLA-Tencor Corp., ___ F.3d ___ (appeal no. 2016-2746). Despite language in earlier decisions suggesting the contrary, and over both sides’ objections, the CAFC held that patent law is not a necessary element of a Walker Process claim, and that therefore the CAFC lacked subject-matter jurisdiction over the appeal.
Patent Trial And Appeal Board Awaits Ruling From Bankruptcy Court On Automatic-Stay Provision
On February 1, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, faced with a motion to stay proceedings pending resolution of the patent owner’s bankruptcy filing, entered an order requiring further briefing and requiring the parties to report on the bankruptcy court’s view of whether the automatic-stay bankruptcy statute applies to inter partes review (IPR) proceedings. Twitter, Inc. v. Youtoo Techs., LLC, case no. IPR2017-00829, paper no. 27.
U.S. Supreme Court Reviews Inter Partes Review In Oil States And SAS Oral Arguments
On November 27, 2017, the U.S. Supreme Court heard oral argument in two cases dealing with the United States Patent and Trademark Office inter partes review (IPR) proceedings that were created in the America Invents Act in 2011. IPRs have been a frequent topic of discussion in the U.S. intellectual-property community since they began; the general impression is that they are a very useful and very effective way of invalidating issued patents, but there is also concern among patent owners that IPRs may be too effective, invalidating patents that a District Court judge or jury would have upheld.