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IPO Daily News™

Wednesday, 25 April 2018

25 April 2018


Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 16-712 — Yesterday in an opinion by Justice THOMAS, the U.S. Supreme Court upheld a Federal Circuit affirmance of a USPTO inter partes review decision that Oil States’ claims for technology used in hydraulic fracturing were invalid as anticipated. Oil States argued that IPR proceedings violated the U.S. Constitution by extinguishing private property rights through a non-Article III forum without a jury.

The Supreme Court found that IPR does not violate Article III because the decision to grant a patent, and by extension to review a granted patent, involves a “public right,” the adjudication of which Congress has “significant latitude” to assign. It explained that a patent is a “public right” because is “involves a matter ‘arising between the government and others.’” Prior Supreme Court decisions cited by Oil States that characterized patents as private property “do not contradict this conclusion” and do not foreclose post-grant review. The Court noted its decision was to be read narrowly, addressing “only the constitutionality of [IPR] and the precise constitutional challenge Oil States raised here. The decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or Takings Clause.” The Article III holding compelled the conclusion that IPR proceedings do not violate the Seventh Amendment. Justice BREYER filed a concurring opinion joined by Justices GINSBURG and SOTOMAYOR.

Justice GORSUCH filed a dissenting opinion joined by Chief Justice ROBERTS, arguing that historically a U.S. patent was considered a “personal right” that the government could divest “only through proceedings before independent judges.”

IPO filed an amicus brief in the case arguing that: 1) U.S. patents should not be characterized as public rights, 2) the Federal Circuit’s statement in MCM Portfolio that patents are public rights was incorrect, and 3) deeming patents to be public rights could be damaging to the interests of patent holders, as well as the patent system at large.
(1 to 4 stars rate impact of opinion on patent & trademark law)


SAS Inst. Inc. v. Iancu, 16-969 — Yesterday in an opinion by Justice Gorsuch, the U.S. Supreme Court held that the USPTO is required to decide the patentability of every claim challenged in a petition for inter partes review. ComplementSoft’s claim was for an integrated development environment for generating and maintaining source code. In an IPR, the USPTO final written decision addressed patentability of only those claims for which it instituted the proceeding. SAS argued to the Federal Circuit that the PTAB had erred by not addressing every claim challenged in its petition. In a split opinion, the original Federal Circuit three-judge panel held that Patent Act section 318(a) “only requires the Board to address claims as to which review was granted.”

The Supreme Court found that the plain meaning of § 318(a), which says that the USPTO “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” supplies the “ready answer” that “the agency cannot curate the claims at issue but must decide them all.” The Court rejected the USPTO’s argument that the Director “retains discretion to decide which claims make it into an inter partes review and which don’t,” stating that “nothing in the statute says anything like that” and that “if Congress wanted to adopt the Director’s approach it knew exactly how to do so.” Chevron deference did not apply given Congress’ “unmistakable commands,” and the Court’s holding in Cuozzo finding that the decision to institute was “final and unappealable” was likewise irrelevant where, as here, “the Director exceeded his statutory authority.”

IPO filed an amicus brief in the case arguing that “[t]he plain language of the AIA requires the PTAB to issue a final written decision that addresses every claim challenged in the petition.”

Justice Ginsburg filed a dissenting opinion joined by Justices Breyer, Sotomayor, and KAGAN. Justice Breyer filed a dissenting opinion joined by Justices Ginsburg and Sotomayor and by Justice Kagan in part.
(1 to 4 stars rate impact of opinion on patent & trademark law)


The USPTO has announced enhancements to Global Dossier, a system which provides access to dossier information of families of applications filed in participating IP offices. With respect to citation lists, the improvements include a new quick view panel that displays abstract and classification for each reference, and the addition of relevancy data for each reference, when available. Regarding patent family lists, users will now have the ability to open dossier in a new window and to export additional relevancy data and citation data in PDF format.

Chat Channel Logo with TM


Tune in to the IP Chat Channel™ today at 2p.m. ET to learn more about several pending disputes that could have a wide impact on biosimilar and pharma litigation. Infringement cases in those industries pose their own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

Our expert panelists are PETER WAIBEL (Novartis), head of U.S. Patent Litigation for that major international pharma and biologic company that is active both as an innovator and in biosimilars, and veteran litigators CYNTHIA HARDMAN (Goodwin Procter, LLP), who typically represents biosimilar applicants and generic drug companies, and CHRISTOPHER LOH (Fitzpatrick, Cella, Harper & Scinto) who represents innovators.

Our panelist will discuss what you need to know and make predictions concerning:

• Whether a biosimilar applicant will be able to bring BPCIA litigation before the brand sponsor brings its suit, an issue in Amgen v. Genentech (C.D. Cal.) and Celltrion v. Genentech (N.D. Cal.).
• Will a biosimilar maker who has not yet filed its marketing application with the FDA be able to appeal an unsuccessful inter partes review? Does it need Article III standing to seek an appeal?
• The complicated calculus regarding venue in Hatch-Waxman and BPCIA litigation.
• Issues when there are multiple defendants in different jurisdictions.
• How to deal with foreign defendants.

IP Chat Channel™ webinars are recorded and available on our website after the live webinars. CLE granted in many states.

Law & Advocacy

Friday, February 21, 2014


During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.

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