Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:

  • an article explaining how the Supreme Court is the “only entity that appears positioned to provide . . . clarity” on patent eligibility;
  • another article discussing how the Federal Circuit affirmed the review power of the temporary head of the Patent and Trademark Office, “sparing the agency from potentially devastating consequences”; and
  • a third article addressing how the Federal Circuit reaffirmed that a patentee has “the burden to offer opposing evidence against the petitioner’s claim” in Patent Trial and Appeal Board proceedings.

Deidre M. Wells and William H. Milliken co-authored an article for Reuters explaining how American Axle & Manufacturing, Inc. v. Neapco Holdings LLC “may the best vehicle to bring the long-awaited clarity on patent eligibility.” According to the authors, “[t]he USPTO can do little on its own to reform § 101 law, because the current doctrine is based on Supreme Court precedent that the USPTO is bound to follow.” Moreover, the authors argued, “[r]ecent efforts at legislative reform on § 101 issues have fizzled, and there is no reason to think future efforts will fare much better given the general environment of gridlock prevailing on Capitol Hill.”

Samantha Handler and Matthew Bultman co-authored an article for Bloomberg Law discussing how, in Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit ruled that “Commissioner Drew Hirshfeld had the authority to review administrative patent tribunal decisions even while he led the US Patent and Trademark Office in a temporary role.” As the article notes, Arthrex had argued that “Hirshfeld lacked authority to deny director review because he wasn’t a presidential nominee confirmed by the Senate and also wasn’t statutorily made an acting director.” The authors emphasized how “such a ruling could cast doubt over all the PTAB’s inter partes review decisions issued during Hirshfeld’s tenure.”

Matthew Schutte wrote an article for IPWatchdog addressing how, in Ethicon LLC v. Intuitive Surgical, Inc., the Federal Circuit “held that, even though a petitioner bears the burden of proof in PTAB proceedings, that does not eliminate the patentee’s burden to offer opposing evidence against the petitioner’s claim.” As the article notes, the Federal Circuit rejected Ethicon’s argument “that a person of ordinary skill in the art (PHOSITA) would not have a reasonable expectation of success in combining the cited prior art and a PHOSITA would not have been motivated to combine them.” Schutte emphasized how the Court found that the “the Board did not misplace the burden of proof on the patentee.”