Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights a note on the USPTO urging en banc review in Arthrex v. Smith & Nephew, an article weighing in on a recent dissent by Judge Newman to a denial of en banc rehearing, a discussion of a request for attorneys’ fees by Microsoft in an appeal against Uniloc 2017, and a comment on the Federal Circuit’s recent decision in a life sciences case.
At Law360, Tiffany Hu reported that “[t]he U.S. Patent and Trademark Office on Friday urged the full Federal Circuit to revisit a panel decision that Patent Trial and Appeal Board judges are unconstitutionally appointed, while slamming Arthrex’s bid to invalidate the statute governing inter partes reviews.” Hu wrote that “[t]he USPTO doubled down on its petition for en banc review” of the Federal Circuit’s decision in Arthrex v. Smith & Nephew. According to Hu, the USPTO “said that the full court should hear the case because the panel’s unconstitutionality ruling was wrong, though it rejected Arthrex’s argument that the only remedy is to strike down the statute.” We will report later this week on all the new briefs in the case.
Blake Brittain and Perry Cooper authored an article for Bloomberg, weighing in on Judge Newman’s dissent last week in the denial of rehearing in BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc. They report that Judge Newman would have found that “[t]he Patent Trial and Appeal Board wrongly dismissed a patent [inter partes] review after disregarding a Federal Circuit remand order” following the Supreme Court’s decision in SAS Institute, Inc. v. Iancu.
Dorothy Atkins reported for Law360 that in Uniloc 2017 LLC v. Microsoft Corporation, “Microsoft Corp. urged the Federal Circuit on Wednesday to find Uniloc 2017 LLC owes attorney fees for filing a ‘frivolous’ infringement suit involving a security patent that is nearly identical to another patent, arguing that the case is exceptional and warrants fees, even though the parties agreed to a stipulated dismissal.” Atkins noted that Microsoft further argued that if the court does not award attorneys fees, “it would discourage plaintiffs from entering stipulated dismissals and spur more unnecessary litigation, merely because plaintiffs would want to avoid paying fees.”
Kevin E. Noonan of Patent Docs commented on the Federal Circuit’s recent decision in Genentech, Inc. v. Hospira, Inc. As explained by Noonan, the court “affirmed invalidation of claims to methods for reducing Protein A leaching in affinity column chromatographic methods important inter alia in purifying monoclonal antibodies.” Noonan said the decision “illustrated anew the importance of the deference the U.S. Patent and Trademark Office (and particularly the Patent Trial and Appeal Board) is due under the Administrative Procedures Act, and how that deference can be outcome determinative under the right circumstances.” Additionally, Noonan pointed out that “Judge Newman dissented, on the basis inter alia that the invention had actually solved a real world problem and that the majority’s affirmance ignored the value the invention brought to the art.”