• Justices Told Patentees Deserve Fee Refund For PTAB Losses – A patent owner seeks Supreme Court review of a Federal Circuit’s ruling that one cannot recover fees and otherwise be compensated for patents invalidated by the Patent Trial and Appeal Board. The petitioner argues such a ruling is unconstitutional under the Fifth Amendment takings clause.
  • Companies ‘Doing Backflips’ at Top Patent Court Seek SCOTUS Help – A petition before the Supreme Court seeks to resolve uncertainty for parties in patent infringement cases who, under the current standard, risk revealing product secrets in order to challenge a competitor’s patent.
  • SCOTUS Won’t Resuscitate Heart Monitor Patent Case – The Supreme Court refused to review a Federal Circuit decision that held that a cardiac monitor patent was a patent-eligible improvement to heart monitoring equipment and not directed to an abstract idea.

Here’s the latest.

Justices Told Patentees Deserve Fee Refund For PTAB Losses

Reported by Adam Lidgett on Law360

The Federal Circuit ruled that one cannot recoup fees and be compensated for patents invalidated by the PTAB. Christy Inc. now seeks review of this decision in the Supreme Court arguing that the Federal Circuit’s decision was unconstitutional. While the Federal Circuit stated that patents are not subject to the takings clause under the Fifth Amendment, Christy argues that a patent is a personal property right. Furthermore, Christy maintains that this ruling would “undermine the policy of encouraging investments in the patented technologies.”

“Christy continues to believe that its patent claims were taken without just compensation,” James F. McDonough III, an attorney for Christy, said in a statement to Law360 on Wednesday. “There is over a century of United States Supreme Court precedent that fully supports the fact that patents, as ‘public franchises,’ are property for which just compensation is due under the Fifth Amendment. We look forward to the Supreme Court upholding its long-held opinions recognizing this.”

Companies ‘Doing Backflips’ at Top Patent Court Seek SCOTUS Help

Reported by Perry Cooper on BloombergLaw

The Federal Circuit’s narrow view of standing has created a challenge for companies, as they weigh whether to reveal damaging product information in order to challenge bad patents in court.  A petition before the Supreme Court involving two pharmaceutical companies could resolve the issue. The Supreme Court recently asked Novartis Pharmaceutical Company to file a response brief in their case against Argentum Pharmaceuticals. While the petition has not garnered much attention from outside parties, a request for a response brief may indicate that the Supreme Court has an interest in taking the case.

The Supreme Court could resolve the issue of how the Federal Circuit decides who can appeal a patent office decision. The petition before the Supreme Court involves pharmaceuticals, but the legal issue is common in other markets as well. Perry Cooper describes the peculiar situation parties are in now when they have to essentially admit to developing a product that it expects will be accused of patent infringement. In other words, companies are doing “backflips” to challenge bad patents.

Such an admission puts companies in an awkward position: If they want to preemptively challenge a patent without being sued for infringement, they have to say something that could be used against them in future litigation to appeal an agency loss.

While anyone can challenge a patent’s validity in inter partes review at the Patent Trial and Appeal Board, seeking an appeal from the board’s decision requires a concrete injury under Article III standing. As Cooper explains, the Federal Circuit established a high bar for appellate review because the court wants litigants who have “skin in the game” or a stake in the outcome.

SCOTUS Won’t Resuscitate Heart Monitor Patent Case

Reported by Muireann Bolger on Life Sciences IP Review

The U.S. Supreme court denied a certiorari petition from InfoBionic seeking to overturn a Federal Circuit decision that revived a cardiac monitoring patent. The patent dispute began when BioTelemetry’s subsidiary CardioNet accused InfoBionic of infringing its patent, which describes “cardiac monitoring systems and techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac arrhythmia.” While the district court agreed with InfoBionic that the patent claims were directed to an abstract idea and the patent was therefore invalid, the Federal Circuit overturned the district court decision and held that the claims were directed to an improvement and thus valid. As Muireann Bolger highlights, the Federal Circuit decision was not unanimously reached.

The court held that step one of the Alice framework did not require an evaluation of the prior art or facts outside of the record regarding the state of the art at the time of the invention.

Circuit Judge Timothy Dyk dissented. He argued that “limiting the use of extrinsic evidence to establish that a practice is longstanding would be inconsistent with authority”, before noting that no case has ever said that the “nature of a longstanding practice cannot be determined by looking at the prior art”.