Last week, the Supreme Court issued its decision in United States v. Arthrex, Inc. As explained in more detail in our June 24, 2021 post, after holding that “the unreviewable authority wielded by APJs during inter partes...more
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
The oral argument in the combined Arthrex cases was held on March 1, 2021. While the parties argued what they considered to be the key issues in their merits briefing, the oral argument provided insight into how the justices...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
In a precedential decision, the Federal Circuit held that the threshold determination that appellant SIPCO LLC’s patent qualifies for covered business method (CBM) review is non-appealable. Accordingly, the Federal Circuit...more
The U.S. Supreme Court has scheduled oral argument in the Arthrex cases (docket 19-1434) for March 1, 2021. And, as of January 11, 2021, the Court has accepted the oral argument time divisions proposed by the Acting Solicitor...more
In the wake of Arthrex’s initial merits brief, amicus briefs in support of Arthrex’s position were filed December 29th and 30th. In the Arthrex cases (docketed as 19-1434), the parties have persuaded the Supreme Court to...more
Progress in the Arthrex case before the Supreme Court continues as Arthrex submitted its initial merits brief on December 23rd. We have previously discussed the decision by the Federal Circuit, the Supreme Court’s grant of...more
On December 2nd, amicus briefs in support of Smith & Nephew and the United States were filed with the Supreme Court in the Arthrex cases. There were also several amicus briefs filed in support of no party. Previous articles...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
Now that the Supreme Court has granted cert in Arthrex v. Smith & Nephew, patent owners and petitioners alike may be wondering what ramifications the Court’s decision may have on their proceedings. In this article, we...more
11/18/2020
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Polaris Innovations Ltd v Kingston Technology Co ,
Principle Officers ,
SCOTUS ,
Severability Doctrine ,
Tenure ,
United States v Arthrex Inc
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
In a succinct opinion, the Federal Circuit ordered a remedy which raises questions thought to have been settled in SAS Institute Inc. v. Iancu, namely whether the Patent Trial and Appeal Board can address only some of the...more
In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that 35 U.S.C. § 314(d) precludes judicial review of the PTAB’s decision to institute inter partes review (IPR) even on a petition filed beyond the 35...more
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
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