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Judicial Advocacy 2017

Nantkwest, Inc. v. Matal, Fed. Cir., No. 2016-1794, 11/22/2017.

Section 145 of the Patent Act, which permits disappointed patent applicants to seek district court review of PTO decisions, does not permit awards of attorneys' fees to PTO lawyers participating in the proceeding, according to an AIPLA brief to the en banc Federal Circuit. While Section 145 requires plaintiffs to pay “all expenses” of the proceeding, that phrase cannot be construed to include attorneys' fees, and it has not been so construed until recently, even though it has been part of the law for over 100 years. The Supreme Court has repeatedly held that Congress must be clear and explicit when it intends legislation to deviate from the common law, which has never included fee shifting. The PTO’s interpretation of Section 145 to require plaintiffs to pay its attorneys’ fees, win or lose, is a dramatic departure from common law that lacks such clear and explicit expression by Congress.

Oil States Energy Services, LLC v. Greene's Energy Group, LLC, U.S., No. 16-712, 8/31/2017.

Congress's decision to permit the Patent Trial and Appeal Board to adjudicate and if necessary cancel issued patents does not violate the separation of powers doctrine or the Seventh Amendment, according to a brief filed August 31, 2017, at the Supreme Court. The brief argued that Congress is authorized by Article I of the Constitution to implement the rights it creates with limited adjudication by the expert agencies charged with administering those rights. The separation of powers doctrine is not violated and the judiciary's role under Article III of the Constitution is not undermined because: Congress is the source of the rights adjudicated by the non-Article III tribunal, the adjudication is confined to issues of patentability, and the adjudication is ultimately reviewable by Article III courts.

In re Silver, Sup. Ct. of Texas, No. 16-1682, 8/10/2017.

Communications between a patent agent and a client should enjoy the protections of an attorney-client privilege when those communications occur within the scope of a patent agent’s authority under the Patent Act, according to an AIPLA letter brief filed August 10, 2017, in the Supreme Court of Texas. The letter brief cites Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), to show that a patent agent is a person authorized to practice federal law, satisfying the definition of a “lawyer” for privilege purposes under Texas rules of evidence. The letter brief also points to federal recognition of the patent agent privilege in In re Queen’s Univ. at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Fed. Cir., Nos. 16-1284, 7/14/2017.

A Federal Circuit panel misconstrued the statutory language and legislative history of 35 U.S.C. 102(a)(1), as amended by the America Invents Act (AIA), when it invalidated a patent based on a press release and SEC filing about a sales agreement by the patent owner, according to an AIPLA amicus brief urging en banc review of the case. The brief explains that the panel failed to recognize that the AIA abandoned the so called "on-sale bar" for sales more than a year before the filing date, instead establishing the prior art effect for sales available to the public before the application's "effective filing date," defined in 35 U.S.C. 100(i). The panel opinion conflicts with the premises of transparency and predictability that underlie the changes enacted by the AIA, according to the brief.​​​​​​

​WiFi One, LLC v. Broadcom Corp., Fed. Cir., No. 2015-1944, amicus brief filed 2/23/2017.

The statute (35 U.S.C. 314(d)) barring appeals of Patent Trial and​ Appeal Board decisions to institute inter partes review proceedings (IPR) does not apply to the statute (35 U.S.C. 315(b)) prohibiti​ng the Board from instituting an IPR on a petition filed more than one year after the petitioner was sued for infringement, according to an AIPLA amicus brief to the en banc Federal Circuit. The brief noted that the non-appealability provision in Section 314 is limited to determinations “under this section,” which are primarily concerned with the sufficiency of the petition. The brief explained that the time bar under Section 315, by contrast, is an express limitation on the authority of the Board to institute an IPR.​​​​​​

​TC Heartland LLC v. Kraft Foods Group Brands LLC,​ U.S., No. 16-341, amicus brief filed 2/6/2017.

The Federal Circuit correctly interpreted the general venue statute at 28 U.S.C. 1391 as providing a definition of “resides” in the patent venue statute at 28 U.S.C. 1400(b). Although the Supreme Court in Forco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), found the two statutes worked independently, Congress changed the law in 1988 by adding to the general venue statute “for purposes of venue under this chapter.” The deletion of that phrase in 2011 did not return the law to the Fourco rule because it was replaced with the phrase “for all venue purposes.” Nor does the added phrase “except as otherwise provided by law” adopt the Supreme Court’s Fourco rule.​​​

Impression Products, Inc. v. Lexmark International, Inc., U.S., No. 15-1189, amicus brief filed 1/24/2017.

The Supreme Court's decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), require no change to the Federal Circuit law of international patent exhaustion and conditional sales, AIPLA argued to the Supreme Court in a January 24, 2017 amicus brief. The brief explains that Kirtsaeng, interpreting a copyright statute stating the “first sale” doctrine, does not control the longstanding patent exhaustion doctrine set out in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001). It further explains that Quanta, which found that sale limitations in a Master Agreement rather than in a patent license failed to avoid patent exhaustion, was a case-specific application of the rules of conditional sales set out in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992)​.​​​​​​

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