Patent Law Practice Center

Senate Confirms USPTO Director

Andrei Iancu was confirmed by the United States Senate on February 5 to become Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office.

Joe Matal, who has been in charge at the USPTO in a quasi-Acting capacity is expected to ultimately become the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.

The Iancu vote, as expected, resulted in a unanimous confirmation. The final vote in the Senate in favor of Iancu’s nomination was 94 to 0.

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Another patent reform advocate to retire from House of Representatives

Congressman Darrell Issa (R-CA), has announced that he will not seek re-election in 2018 and will retire from Congress. Issa, who currently chairs the House’s Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, has been an outspoken advocate for the need for more patent reform.

Issa’s decision not to seek re-election means that the three most ardent Republican supporters of patent reform in the House will not return for the 116th Congress in January 2019. House Judiciary Chairman Bob Goodlatte (R-VA) announced his retirement in November 2017. Former House Judiciary Chairman and co-sponsor of the America Invents Act (AIA) Congressman Lamar Smith similarly announced his retirement in November 2017.

If Republicans hold on to a majority in the House, it seems likely that Congressman Doug Collins (R-GA) will take over as Chair of the House IP Subcommittee. Collins, an ally to inventors and creators, is currently Vice-Chair of the House IP Subcommittee.

While many patent owners and independent inventors will celebrate Issa’s decision to retire, his legacy on patent issues is a complicated one.

“As a patent owner himself, Chairman Issa understood the importance of a strong IP system,” said Todd Dickinson, former Director of the United States Patent and Trademark Office and current partner at Polsinelli.  “While some differed with him on his approach to specific reforms, his heart was always with the system, so losing someone who knew the patent system personally will be a loss.”

Whether Issa was a hero or villain on matters of patent reform will largely be in the eye of the beholder. Many large corporations — such as Google, Cisco and J.C. Penney — have continued to seek additional patent reform ever since the AIA was signed by President Obama in September 2011, and have found Issa to be a strong ally.

What is not open for debate, however, is Issa’s influence in a positive way on how the federal courts structurally handle and assign patent lawsuits. “He should specifically be remembered for initiating the legislation that ultimately lead to the judicial Patent Pilot Program, which has been a successful attempt to create focus and training among District Courts and their judges having a particular interest in patent cases,” Dickinson said.

Should the Democrats take the House of Representatives in the next election cycle probably either Congressman Jerrold Nadler (D-NY), who is the Ranking Member on the House Judiciary Committee, or perhaps Congresswoman Zoe Lofgren (D-CA), would become the new Chair of the House Judiciary Committee. Both Nadler and Lofgren have been supporters of patent reform efforts in the past. Congressman Hank Johnson (D-GA) is currently the Ranking Member on the Subcommittee on Courts, Intellectual Property and the Internet, and could perhaps ascend to Chair the House IP Subcommittee. Johnson has taken positions in the past favorable to patent owners, such as his Amendment that would have substantially changed the fee-shifting provisions of the Innovation Act.

Federal Circuit finds no problem with district court re-submitting case to jury

On January 19, 2018, the Federal Circuit issued a decision in Flexuspine, Inc. v. Globus Med. The appeal centered on the jury verdict form and how the jury specifically handled its duties in relation to that jury form.

The jury form included what is known as a “stop instruction,” which told the jury not to consider any of the invalidity defenses unless they first determined that the defendant was liable for infringement.  Globus, the defendant, did not object to the instruction prior to jury deliberations.

Upon reviewing the verdict form after deliberations ended, the district court determined that the jury had not followed the instructions and had filled out the verdict form incorrectly. The jury found no infringement, but did not stop there, and instead moved on to consider invalidity and damages. The jury form indicated that the jury found the claims invalid, and no damages should be awarded.

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En banc Federal Circuit overrules Achates on IPR appealability

Several weeks ago, the Federal Circuit issued an en banc decision in Wi-Fi One, LLC v. Broadcom Corp.

This dispute arose because Congress provided that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Id. § 314(d). Notwithstanding, Congress similarly prohibited the Director from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement. 35 U.S.C. § 315(b).

A panel of the Federal Circuit previously held that a § 315(b) time-bar determination is final and nonappealable under § 314(d). See Achates Reference Publishing, Inc. v. Apple Inc. Therefore, in this en banc appeal, the Federal Circuit had to determine whether the bar on judicial review of institution decisions in § 314(d) applies to time-bar determinations made under § 315(b).

The Federal Circuit reversed Achates, and ruled that time-bar determinations under § 315(b) are appealable.

Predictions and Musings on 2018

Each year, I ask a panel of industry experts to make predictions for the upcoming year, and to identify particular news, stories or events they will be watching with interest. See Predictions for 2018 and Topics to Watch in 2018.

Given that several industry insiders were willing to make their own predictions, it seems only fair for me to likewise go out on a limb and make my own predictions.

First, I predict that the United States Supreme Court will find post grant procedures under the America Invents Act to be unconstitutional. It is my belief they took Oil States not as a patent case, but rather as an Administrative State case, and if that is correct, this could be the first in a series of decisions over a number of years that will pull authority back from the growing Administrative State and toward the Judiciary.

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