This week and last the Supreme Court decided United States v. Arthrex, Inc. and Minerva Surgical, Inc. v. Hologic, Inc., two patent cases appealed from the Federal Circuit. Here is a report on recent articles and blog posts related to these cases.
USPTO Provides Guidance on Director Review Process Under Arthrex – On IPWatchDog, Eileen McDermott and Steve Brachmann write about how after the Arthrex decision the Patent and Trademark Office announced that it would implement the Supreme Court’s remedy using an interim rule that gives the Acting Director the authority to consider requests for reconsideration of final decisions made by the Patent Trial and Appeal Board.
What Will Arthrex Review Look Like? – Bradley Roush and George E. Quillin posted an article on the National Law Review raising questions many are having about how the Patent and Trademark Office will implement the new Director-led review process.
Justices Uphold a Narrow Version of Patent Assignor Estoppel – On SCOTUSBlog, Eric M. Fraser discusses how the Supreme Court reached its decision in Minerva narrowing the doctrine of assignor estoppel.
Professor Kagan v. Professor Barrett, Round 1 of N – On the Volokh Conspiracy, Josh Blackman posts about how in the Minerva case “two former professors were on opposite sides of the docket.”
USPTO Provides Guidance on Director Review Process Under Arthrex
Eileen McDermott and Steve Brachmann report on IPWatchDog.com that the “nation’s highest court found that the constitutional Appointments Clause violation created by the process for appointing administrative patent judges (APJs) to the USPTO’s Patent Trial and Appeal Board (PTAB) was best cured by review of APJ decisions by the USPTO Director.” McDermott and Brachmann explain three principles that they say have guided the USPTO and Acting Director Hirshfeld in issuing the interim guidance on Director Review. First, they point to the idea that “the Office wanted to provide guidance as quickly as possible, even if not complete.” Second, they contend that Hirshfeld intends to be 100% transparent. And, lastly, they highlight that the USPTO desired to allow parties to be able to request Director review, even though this was not a requirement of the Supreme Court’s decision.
What Will Arthrex Review Look Like?
On the National Law Review, Bradley Roush and George E. Quillin discuss questions regarding the review process that will be implemented after the recent Supreme Court decision in the Arthrex case. The first question they answer regards the standard of review that will be applied, which at least during the interim progress will be de novo. Second, responding to the question of how long the review process will take, the article states that there is a “lack of clarity [stemming] in part from inconsistent terminology.” Third, Roush and Quillin note that it isn’t clear how this Director-led review will impact the Federal Circuit’s review of USPTO decisions.
To read our opinion summary of Arthrex, click here.
Justices Uphold a Narrow Version of Patent Assignor Estoppel
On his article on SCOTUSBlog.com, Eric Frasner reports on the Minerva case, which he explains “prohibits an inventor from assigning a patent to someone and then later contending in litigation that the patent is invalid.” Frasner writes that Justice Kagan, who wrote for the majority, “emphasized that assignor estoppel is rooted in principles of fair dealing.”
Professor Kagan v. Professor Barrett, Round 1 of N
In his article on the Volokh Conspiracy, Josh Blackman comments on the recent Supreme Court decision in Minerva, explaining that he enjoyed the two primary opposing opinions by former Professors and now Justices Kagan and Barrett because they were “clean, easy to read, not vituperative, witty in all the right places, but not overdone.” Blackman expresses his view that there was a lot to agree with on both sides of the “feisty exchange” and he looks forward to “many, many future such matches.”
For more of our coverage on Minerva, click here.