Category Archives: America Invents Act

Supreme Court Bars Time-Bar Appeals In PTAB Cases

ByCarissa T. Howard of Counsel at Houston Harbaugh

The U.S. Supreme Court ruled today that U.S. Patent and Trademark Office (“USPTO”) decisions on the timeliness of administrative patent validity challenges are not appealable to Article III courts.

Inter partes review proceedings give an accused infringer the right to challenge the asserted patent’s invalidity before the USPTO, provided that such challenges are timely filed within one year of the complaint for patent infringement. The Supreme Court ruling in Thryv v. Click-to-Call Technologies gives the USPTO almost unfettered authority to decide whether a party properly sought review under the America Invents Act (“AIA”) within the one year, or was in privity with a supplier, business partner or other party who had been sued. The ruling is a blow to patent owners, who have frequently challenged inter partes review proceedings on those grounds and won at the U.S. Court of Appeals for the Federal Circuit.

But letting patent owners tie up proceedings with timeliness appeals cuts against the AIA’s goal of weeding out bad patent claims efficiently, Justice Ruth Bader Ginsburg wrote for 7-2 majority. Doing so would “tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable,” Ginsburg wrote.

Justice Neil Gorsuch dissented, arguing that the time-bar is “both a constraint on the agency’s power and a valuable guarantee that a patent owner must battle the same foe only once,” and the PTO should not have “freewheeling authority” to interpret it.

The case is Thryv Inc. v. Click-To-Call Technologies LP, case number 18-916, in the Supreme Court of the United States.

For more see, https://www.law360.com/ip/articles/1246469/breaking-supreme-court-bars-time-bar-appeals-in-ptab-cases?nl_pk=85f4326a-8e56-4fad-9fe8-a41f009140e5&utm_source=newsletter&utm_medium=email&utm_campaign=ip

Carissa T. Howard is an intellectual property attorney with over 16 years of experience, Carissa’s practice is focused in federal court intellectual property litigation, patent prosecution, trademark prosecution, intellectual property counseling, and contract drafting. She also has experience in intellectual property licensing and preparing due diligence, infringement and validity opinions. She can be reached at howardct@hh-law.com or 412-288-2213

Supreme Court Rules That Government is Not a “Person” Under the America Invents Act

ByCarissa T. Howard of Counsel at Houston Harbaugh

Federal law has allowed for third party requests for reexamination of an issued patent on the basis on prior art since the 1980s. Under the America Invents Act of 2011 (AIA), three review processes replaced what was then known as “inter partes reexamination.” These three review proceedings enable a “person” other than the patent owner to challenge the validity of a patent post-issuance: (1) “inter partes review,” §311; (2) “post-grant review,” §321; and (3) “covered-business-method review” (CBM review). As an alternative to or in connection with a patent litigation, an interested third party, an accused infringer, or any “person,” can request one of these types of reviews.

In Return Mail v. Postal Service, the Supreme Court held that “[t]he Government is not a “person” capable of instituting the three AIA review proceedings.” https://www.supremecourt.gov/opinions/18pdf/17-1594_1an2.pdf (June 10, 2019)

Return Mail sued the US Postal Service (part of the US Federal Government) for infringing its mail processing patent and Postal Service petitioned for CBM review under the AIA.  The PTO agreed that the patent claimed ineligible subject matter, and cancelled the claims. On appeal, the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding that the Government is not a person under the statute and therefore cannot petition for AIA review.

Justice Sotomayor led the conservative majority joined by Chief Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.  Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and Kagan.

The majority here started with its presumption that congressional statutes are not intended to bind or be directed to U.S. Government activity. Here, the court looked and did not find sufficient textual language to overcome that initial presumption.   In particular, the word “person” is used many times in the Patent Act (at least 18 times) and in several different ways.  There is basically no indication that this particular use of “person” was designed to include the U.S. Government. The majority also noted the awkwardness:

Finally, excluding federal agencies from the AIA review proceedings avoids the awkward situation that might result from forcing a civilian patent owner (such as Return Mail) to defend the patentability of her invention in an adversarial, adjudicatory proceeding initiated by one federal agency (such as the Postal Service) and overseen by a different federal agency (the Patent Office).

The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act.  In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).

Carissa T. Howard is an intellectual property attorney with over 16 years of experience, Carissa’s practice is focused in federal court intellectual property litigation, patent prosecution, trademark prosecution, intellectual property counseling, and contract drafting. She also has experience in intellectual property licensing and preparing due diligence, infringement and validity opinions. She can be reached at howardct@hh-law.com or 412-288-2213

Supreme Court Holds: AIA Does NOT Change Patent “On – Sale Bar” Doctrine

There has been a nagging question regarding the status of the on-sale bar ever since passage of the AIA in 2011. The Supreme Court has unanimously answered the question in the negative in the slip opinion in Helsinn Healthcare v. Teva No. 17–1229. Argued December 4, 2018—Decided January 22, 2019. See opinion here: https://www.supremecourt.gov/opinions/18pdf/17-1229_2co3.pdf

Justice Thomas wrote for the unanimous court to affirm the Federal Circuit ruling and the summary of same is here. Even a “secret sale” can trigger the bar. The Court framed the issue:

“We granted certiorari to determine whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. 585 U. S. ___ (2018). We conclude that such a sale can qualify as prior art.”
“Held: A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a). The patent statute in force immediately before the AIA included an on-sale bar. This Court’s precedent interpreting that provision supports the view that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. See, e.g., Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67. The Federal Circuit had made explicit what was implicit in this Court’s pre-AIA precedent, holding that “secret sales” could invalidate a patent. Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1353, 1357. Given this settled pre-AIA precedent, the Court applies the presumption that when Congress reenacted the same “on sale” language in the AIA, it adopted the earlier judicial construction of that phrase. The addition of the catchall phrase “or otherwise available to the public” is not enough of a change for the Court to conclude that Congress intended to alter the meaning of “on sale.” Paroline v. United States, 572 U. S. 434, and Federal Maritime Comm’n v. Seatrain Lines, Inc., 411 U. S. 726, distinguished. Pp. 5–9. 855 F. 3d 1356, affirmed.”

Posted by Henry M. Sneath, Esquire Co-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.  401 Liberty Avenue, Pittsburgh, Pa. 15222Sneath is also an Adjunct Professor of  Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law. Please contact Mr. Sneath at 412-288-4013 or sneathhm@hh-law.com

Top Patent Decisions in 2018 per Law 360

Pullback from Alice? In February, the Federal Circuit issued its decision in Berkheimer v. Hp, Inc. ( February decision )  and seemed to pull back from what some would say is the overuse and early use of the Alice decision to invalidate patents. Key holding is that the question of whether a patent contains ineligible subject matter may involve factual questions and that Motions to Dismiss and even Summary Judgment Motions may not be the proper forum for such invalidation decisions. Law 360 reports however, that there is still apparent division on the CAFC with regard to Alice and its progeny.

 

Reinforcement of TC Heartland: In BigCommerce, Inc. v Beyond, the CAFC once again answered the simple question of how many districts  can have proper venue for a case. Answer = 1. “Principal place of business” or “state where defendant is registered to do business.” See (” overturned “). CAFC overturned Texas District Court Judge Rodney Gilstrap in this decision and the erosion of seemingly automatic jurisdiction in the Eastern District of Texas continues. See other key decisions here from Law 360

Posted by Henry M. Sneath, Esq.                                             Shareholder and Director;                                                                                      Co-Chair of the Litigation Department;                                                    Chair of the IP Department;                                                                         Houston Harbaugh, P.C.  (www.hh-law.com)                                                    Pittsburgh, Pa.                                                                                                              Please contact Mr. Sneath at 412-288-4013 or sneathhm@hh-law.com