Supreme Court Ruling Regarding Inter Partes Review (IPR)

From Fish & Richardson Legal Alert
May 10, 2018:

In short, this Ruling results in changes for IPRs at the PTAB.  If the PTAB is to institute an IPR on any Ground in a Petition, it must institute on all grounds.

Supreme Court Ruling Regarding Inter Partes Review (IPR)

Implications of Oil States Energy Services and SAS Institute

As the most-active firm practicing at the Patent Trial and Appeal Board (PTAB), we are proud to have shared in our clients’ successes over the years. Fish was one of the first firms to file a post-grant petition in 2012, and since then we have enjoyed being a part of the growth of this important area of legal practice. As a Diamond Seed Funder of the PTAB Bar Association, and through our events and webinars, we have met and spoken with many of you, and we would like to take this moment to express our thanks for your continued support. The past two weeks have been exciting as we learn about the implications of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute Inc. v. Iancu. Below are our analyses of these opinions, as well as links to resources you may find helpful as you, too, plan for the future.

As for future proceedings, the PTAB has issued guidance on the impact of SAS indicating that “the PTAB will institute as to all claims or none” and “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” The guidance further indicates that for pending trials where partial institution has occurred “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.” And, if a supplemental institution decision is issued, “the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.”


Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.,
584 U.S. ____ (2018), 2018 U.S. LEXIS 2630.

Oil States addressed two separate constitutional challenges to inter partes review (IPR): (1) whether IPR violates Article III of the Constitution because it allows an administrative agency—not Article III courts—to extinguish a patentee’s rights; and (2) whether IPR violates the Seventh Amendment because it allows administrative judges, rather than juries, to adjudicate validity. In a 7-2 decision, the Supreme Court affirmed the Federal Circuit, holding that IPR does not run afoul of Article III or the Seventh Amendment. The majority opinion was penned by Justice Thomas, who many thought would find IPR unconstitutional based on his dissent in B&B Hardware, v. Hargis Indus., 135 S. Ct. 1293 (2015), where he opined that decisions of the Trademark Trial and Appeal Board (TTAB) revoking issued trademark rights should not have a preclusive effect in a subsequent trademark infringement suit. Justice Thomas was joined in Oil States by Justices Kennedy, Ginsburg, Breyer, Alito, Sotomayor, and Kagan. Justice Breyer authored a concurring opinion, joined by Justices Ginsburg and Sotomayor. Justice Gorsuch, author of the majority opinion in SAS, filed a dissenting opinion, joined by Chief Justice Roberts.

As to the Article III challenge, the majority found that “[i]nter partes review falls squarely within the public-rights doctrine,” and therefore resides inside the scope of Congress’ authority to assign adjudication to entities other than Article III courts. Slip op., 6. In reaching this conclusion, the opinion reasons that patents are “public franchises” granted by the government to bestow upon the patent owner the right to exclude. Slip op., 7. According to the majority, “[i]nter partes review involves the same basic matter as the grant of a patent,” and “[s]o it, too, falls on the public-rights side of the line.” Slip op., 8. Like other public rights, patent claims are granted subject to the qualification that they may be reexamined and canceled by the United States Patent and Trademark Office (USPTO). Slip op., 9-10.

The opinion addresses prior decisions recognizing patent rights as “private property of the patentee” by noting that “those case(s) were decided under the Patent Act of 1870” and are “best read as a description of the statutory scheme that existed at that time.” Slip op., 10-11. Such precedents, therefore, “do not resolve Congress’ authority under the Constitution to establish a different scheme.” Slip op., 11.

The opinion also dismisses arguments based on historical practice in 18th-century English courts of law, finding that the framers of the Constitution were also aware of a Privy Council proceeding resembling IPR, and yet there is no evidence that the framers sought to preclude such a proceeding. Slip op., 12-14. The opinion similarly disposes of arguments citing the historical adjudication of patent validity in American Article III courts, stating: “That Congress chose the courts in the past does not foreclose its choice of the PTO today.” Slip op., 14-15. Separately, the opinion reasons that similarities between procedures used in IPR and Article III courts do not lead to a conclusion that the PTO is exercising judicial power. Slip op., 15. While IPR includes features of adversarial litigation, it does not make binding determinations as to liability between the parties and therefore remains a matter solely involving public rights. Slip op., 15-16.

In concluding its Article III discussion, the majority opinion emphasizes the narrowness of its holding, expressly leaving open three issues: (1) whether infringement actions can be heard in a non-Article III forum; (2) whether IPR would be constitutional absent review by the Federal Circuit; and (3) whether retroactive application of IPR to pre-America Invents Act (AIA) patents is permissible under the Constitution. Slip op., 16-17.

The opinion only briefly addresses the Seventh Amendment challenge, finding it resolved by the Article III challenge because “when Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to adjudication of that action by a nonjury factfinder.” Slip op., 17.

Justice Breyer, joined by Justices Ginsburg and Sotomayor, authored a short
concurring opinion clarifying that the majority opinion should not be read in a manner
that categorically excludes adjudication of private rights other than by Article III courts.
Concur, 1.

Justice Gorsuch, joined by Chief Justice Roberts, authored a dissent analogizing a patent to a “personal right—no less than a home or a farm” and, therefore, finding that right properly revocable “only with the concurrence of independent judges.” Dissent, 2. The dissent characterizes IPR as a scheme that, while well-intended, “represents a retreat from the promise of judicial independence.” Dissent, 3. From this premise springs concern that a bureaucratic regime is subject to capture by “[p]owerful interests” in such a manner that “the losers will often prove the unpopular and vulnerable.” Dissent, 3. The dissent then embarks on a lengthy discussion of history and precedent, much of which is addressed by the majority opinion, to support its conclusion that the character of patents is such that, once issued, they may be revoked only by Article III courts. Dissent, 3-12.

SAS Institute Inc. v. Iancu, et al., 584 U.S. ____ (2018), 2018 U.S. LEXIS 2629.

In SAS, the Supreme Court addressed the question of whether 35 U.S.C. §318(a) requires the Board to issue a final written decision as to every claim challenged by the petitioner, or permits adjudication of only some of the challenged claims, as the Federal Circuit held. In a 5-4 decision, the Supreme Court reversed the Federal Circuit, holding that the Board must decide the patentability of all of the claims the petitioner has challenged. The majority opinion was penned by Justice Gorsuch (the author of the dissent in Oil States ) and joined by Justices Roberts, Kennedy, Thomas, and Alito. Justices Ginsburg and Breyer authored dissents joined by Justice Sotomayor and, in part, by Justice Kagan.

The majority found that “the plain language of §318(a) supplies a ready answer” to the question presented. Slip op., 4. The text of §318(a) is “both mandatory and comprehensive,” expressly stating that “the [Board] shall issue a final written decision with respect to the patentability of any claim challenged by the petitioner.” Slip op., 4 (original emphasis). In the majority’s view, the word “shall” imposes a nondiscretionary duty, and the term “any” means “every.” Slip op., 4-5. Thus, §318(a) “means the Board must address every claim the petitioner has challenged.” Slip op., 5 (original emphasis). The opinion finds no support in the text of §318(a) to support the director’s claimed power of “partial institution,” and explains that “what can be found in the statutory text and context strongly counsels against the Director’s view.” Slip op., 5.

Starting with pre-institution statutes §311(a) and §312(a)(3), the opinion gleans “that Congress chose to structure a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” Slip op., 6. And, from comparison with the sister ex parte reexamination statute, it is clear that Congress purposefully departed from a regime in which the director has authority to conduct review and investigation of issued patents “[o]n his own initiative, and at any time.” Slip op., 6 (citing 35 U.S.C. § 303(a)).

As to the institution statute, §314(b), the opinion explains that the director is charged with determining “whether” to institute, which “indicates a binary choice—either institute review or don’t.” Slip op., 7. “Nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.” Slip op., 7. The opinion rejects the director’s contention that §314(a) authorizes claim-by-claim institution, finding instead that “it simply requires him to decide whether the petitioner is likely to succeed on ‘at least 1’ claim.” Slip op., 7. From here, “the Director need not even consider any other claim before instituting review.” Slip op., 7. Again, comparing the inter partes review statute in §314(a) to the comparable ex parte re-examination statute in §304, the majority opined that Congress knew how to grant claim-by-claim and ground-by-ground authority but deliberately chose not to. Slip op., 7-8. The extent of the director’s discretion under §§314(a) and 314(b) relates to the question of whether to institute review and excludes what claims that review will encompass. Slip op., 8.

As to the remainder of the statute, the opinion notes that §316(a)(8) instructs the director to adopt regulations governing the patent owner’s response to the petition, rather than a response to the director’s institution notice. Slip op., 8. Finally, §318(a) “categorically commands” that all claims be addressed in the Board’s final written decision. Slip op., 9. “In all these ways, the statute tells us that the petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion.” Slip op., 9.

The opinion discards the director’s assertion that “linguistic discrepancy” between §314(a) and §318(a) afford the implicit power to institute fewer than all challenged claims. Slip op., 9. According to the majority, the difference in language between these provisions is “fully explain[ed]” by §316(d)(1)(A), which permits the patent owner to cancel challenged claims during the proceeding. Slip op., 9-10.

Having fully vetted the statutory text, the opinion moves on to address the director’s policy argument that “partial institution is efficient because it permits the Board to focus on the most promising challenges and avoid spending time and resources on others.” Slip op., 10. This too was unpersuasive to the majority, which viewed policy considerations of this sort as more appropriately addressed in Congress. Slip op., 10. The opinion further disposes of the director’s suggestion that his office should be afforded deference with respect to its interpretation of an ambiguous statute, under Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Slip op., 11. For the many reasons discussed above, the opinion finds the statutory text “deliver[s] unmistakable commands,” leaving “no room . . . for a wholly unmentioned ‘partial institution’ power[.]” Slip op., 12.

Lastly, the opinion rejects the director’s invocation of Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), for the proposition that institution decisions are final and nonappealable. Slip op., 12. Here, the opinion re-emphasizes both the narrowness of the holding in Cuozzo and the Court’s prior proclamation that “§314(d) does not ‘enable the agency to act outside its statutory limits.’” Slip op., 13.

Justice Ginsburg, joined by Justices Breyer, Sotomayor, and Kagan, authored a one-page dissenting opinion criticizing the majority’s reading of §318(a) as “wooden” and potentially subject to circumvention if the Board simply denies institution on all claims and details which claims have merit. Op., 1. The petitioner could then refile a new petition including only those claims receiving a favorable review in the first instance. Op., 1. Thus, the dissent asks “[w]hy [] the statute [should] be read to preclude the Board’s more rational way to weed out insubstantial challenges?” Op., 1.

Justice Breyer, joined by Justices Ginsburg, Sotomayor, and Kagan (in part), authored a full-throated dissent, finding the statutory text of §318 ambiguous because it “contains a gap just after the words ‘challenged by the petitioner.’” Op., 8. The dissent observes that, under Chevron, an agency is granted leeway to enact rules that are reasonable in light of the text, nature, and purpose of an ambiguous statute. Op., 8-9. According to the dissent, the United States Patent and Trademark Office has done so in this instance, and therefore its rules should not be disturbed. Op., 10.


Guidance on the Impact of SAS on AIA Trial Proceedings
USPTO – Chat with the Chief on SAS
Looking Ahead: Practical Implications of Oil States Energy Services and SAS Institute
Post-Grant Oil States Podcast




Patent Dispute Trends: Patent Litigation Down 26 Percent While IPR Up 22 Percent in Q1 of 2017 reports continuing reduction in the filing of suits for patent litigation and continuing increase in the filing of Inter Partes Review (IPR).

Detailed information and graphs on these trends are provided in the article including year-over-year from 2015 on to 2017Q1.  The 2017Q1 data shows:

“In the first quarter of 2017 we saw a continued decline in patent litigation. The district court litigation was down 26 percent to 1,012, compared to 1,346 in Q4 of 2016. And it was down 5 percent year over year (1,067 in Q1 of 2016). For the same period, Inter-Partes Review (IPR) was up 22 percent to 550, compared to 448 in Q4 of 2016. This increase was even sharper year over year. IPR saw a whopping increase of 64 percent in Q1 2017 versus Q1 2016, which saw 335.”

One key statistic related to the IPR process:  “IPR activity per quarter was at an all-time high in Q1 2017. Since its inception in September 2012, IPR has been gaining popularity as a tool to challenge the validity of patents in lawsuits or licensing deals. …”

Related to patent litigation cases:  “Patent litigation in district courts was at its lowest level since 2011. Although the litigation has dropped to pre-AIA levels, it is worth mentioning that post-AIA numbers are generally magnified because of joinder rules. …”




Samsung Galaxy Note 7 Phones are Burning/Exploding!!

Two weeks after releasing the Galaxy Note 7 SmartPhones, Samsung is literally and figuratively fighting fires!  They have now recalled the roughly 2.5 Million Galaxy Note 7 that have been distributed (about 1 Million phones sold).  This is clearly a serious safety and reliability issue that should have been identified before any shipments started.  Not only is there the cost associated with the recall, replacement, possible personal injury and property damage, Samsung stock has taken a hit that knocked $2 Billion off of its market value!  The market can be massively punishing and unforgiving for mistakes like this one.

To date, 35 reports of fire/explosion issues have been received by Samsung.  Samsung believes that the problems are confined to fewer than 0.1% of the phones.  Based on a population of 2 Million phones, this would indicate the problems apply to less than 2000 phones.  This is a huge number of failures and a 99.9% reliability (even if the reliability level is even this high) is an unacceptable level in the consumer products world.

We expect these products not only to function reliably but also to be safe.  Battery fire issues with hoverboards in late 2015 basically tanked the sales of that product.

Additional details including the press release can be found here.


Concussion Mitigation in Pro Football with Advances in Helmet Technology

Pro Football players in the NFL are bigger, faster, and stronger than ever before.  All of these characteristics increase the acceleration, force, and energy associated with contact between players.  When this contact occurs to the head it can translate into a concussion or just contribute to an ongoing series of cumulative smaller injuries.

Evidence is mounting that concussions or cumulative injuries have serious long-term effects.  This long-term effect applies not only to football, but also things like battlefield blast loading and similar events.

Discussion on sensor technology and helmet improvements.
Reference articles with further information:



Google Prevails in WAZE Copyright Infringement Suit by PhantomAlert

In the first round of this suit, Google scored at least a temporary victory in that the judge ruled that a copyright claim could not hinge on simple facts of where points of interest are located.

From :

Google, the owner of the traffic app Waze, has managed to beat back a copyright lawsuit filed by lesser-known rival PhantomAlert.
Back in September 2015 PhantomAlert sued Google over allegations of copyright infringement. Google purchased Waze in June 2013 for over $1 billion. PhantomAlert alleged that, after a failed data-sharing deal between itself and Waze collapsed in 2010, Waze apparently stole PhantomAlert’s “points of interest” database.

In a judicial order filed earlier this month, the San Francisco-based federal judge found that PhantomAlert could not allege a copyright claim on simple facts of where different places actually are.

As US Magistrate Judge Joseph Spero wrote, granting Google’s motion to dismiss:

It is apparent from the allegations in the Complaint that Plaintiff’s Points of Interest are inherently factual, involving “traffic conditions, speed restrictions, and police-monitors,” that is, objective facts that can be discovered and reported. Compl. ¶ 17. The Supreme Court has made clear that facts are not copyrightable, though the creativity associated with the selection and arrangement of those facts in a compilation may be protectable (as discussed below). See Feist, 499 U.S. at 347-48. This rule applies even when the “facts” are inaccurate, as was the case in Feist, where the defendant had copied a handful of false listings that were “seeded” in the plaintiff’s directory. Id. at 344.
While it is possible to assert a copyright over a set of facts that are arranged or organized in a particular way, the court found that PhantomAlert had not done that. As Judge Spero continued:

Here, Plaintiff has not alleged any specific facts that suggest that the arrangement of the information in its Points of Interest database is characterized by any originality. There are no allegations that the data is organized into categories, for example, or that there is anything creative about the way the data is displayed. Further, to the extent Plaintiff alleges the information in the database is edited so as to alert the driver of the Point of Interest before reaching the actual location, see Compl. ¶ 22, there appears to be no creativity involved in these changes. As discussed above, the arrangement of the Points of Interest on the map merely effectuates the purpose of the database; presumably any app intended to alert drivers of the types of points of interest contained in Plaintiff’s database would make very similar changes.

However, the judge will allow PhantomAlert to file an amended complaint no later than mid-January 2016.

This article comes from the arstechnica  Article

Also note that the link to
Links directly to the Legal Document with the full opinion  of the judge at:

Medical Device Patent Case: Jury Rules Medtronic Willfully Infringed TAVI Heart Valve Patent from Edwards Lifesciences

Smart phones and similar devices have very valuable patents and high-stakes patent litigation.  There are also high stakes in medical devices. Read about this jury verdict below:

Jury Rules Medtronic Willfully Infringed TAVI Heart Valve Patent from Edwards Lifesciences

This story was published in Medical Product Oursourcing (MPO) at:

Part of Heart Valve

Medtronic Inc.’s CoreValve system infringes on a patent of Edwards Lifesciences Corp., according to the ruling of a federal court jury in Delaware on Jan. 15. The ruling, part of an ongoing legal battle between the two companies, holds Medtronic liable for $393.6 million in damages.

CoreValve is used in a transcatheter aortic valve implantation (TAVI) procedure, a minimally invasive treatment option for people with severe aortic stenosis. It received CE mark in Europe in 2007, but is not yet available in the United States. Minneapolis, Minn.-based Medtronic expects U.S. Food and Drug Administration approval by the completion of its 2014 fiscal year (end of April). Edwards has had the U.S. aortic valve market to itself since November 2011. Analysts expect TAVI to be a $3 billion worldwide market by the end of the decade.

Edwards and Medtronic are the two largest players in the European market for transcatheter aortic valves. And, perhaps as a result, the companies are no strangers to this sort of court battle. They have battled it out in U.S. and European courts before about patents held by Irvine, Calif.-based Edwards.

The Effect of Congress’ 1998 Extension of Copyright Protection

A colleague pointed me to this very interesting article in the Dec 31, 2013 Washington Post written by Brian Fung.  The article highlights some of the significant differences between the duration of copyright protection versus patent protection. And also points out a number of iconic works that would be in the public domain now except for Congressional extensions of copyright protection.

The title of the article is: “If not for Congress, Superman, Lassie and Scrabble would be free for anyone to reproduce tomorrow”.

After the copyright extensions by Congress in 1998, works before 1978 can have copyright protection for up to 95 years!!

The author points out that:

“On Jan. 1, a whole raft of artistic and intellectual works will be making their way into the public domain — or they would be if Congress hadn’t extended copyright terms for the umpteenth time in 1998. At its core, copyright is meant to protect authors and creators. But as we’ve seen recently with a battle over Sherlock Holmes, copyrights can sometimes prevent well-meaning fans from showing the depth of their appreciation for a work by becoming creators themselves.”

“These days things that were published before 1978 enjoy copyright protections of up to 95 years, but that wasn’t always the case. Under the rules Congress made before the most recent term extension, rights-holders of older works were protected for just 75 years — at which point the work would enter the public domain and be free for anyone to use or riff upon.”

See the full article for more details:

Amazing video sequence of Explosion at Henderson, NV – 1988

Today I posted the movie that was shot live from Black Mountain of the 1988 explosion at the PEPCON Plant in Henderson, NV.  This is one of the most incredible movies of an accident that you will ever see because it captured almost the entire sequence of a process plant fire and several explosions; an incredible disaster while it was in progress.  Go to the Articles menu and read the background and details on this accident.  Then hit the link “Click  for Movie of actual Explosion“.  You will be amazed!!   It is rare for an accident of this speed and magnitude to be filmed as events unfold!!  (Note:  You can also use the highlighted links from this Blog post).  Dr. Kim Parnell worked extensively on this investigation while at Exponent.