Arthrex and Reexamination

Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020).

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John P. Isacson

Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been replaced by inter partes and post-grant reviews. Inter partes reexaminations were conducted before a panel of examiners, and then subject to review by the PTAB in an appeal capacity. Here, Cisco and the Director of the USPTO sought rehearing of a decision that extended the Arthrex doctrine to inter partes reexaminations. Continue reading “Arthrex and Reexamination”

U.S. Government in Search of Arthrex Reversal

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John P. Isacson

Image Processing Technologies LLC v. Samsung Electronics Co., LTD. et al., Appeal Nos. 2018-2156, 2019-1408, 2019-1485 (Fed. Cir. March 2, 2020).

The Federal Circuit vacated and remanded the PTAB’s decisions against Image Processing’s U.S. Patent No. 8,983,134 in IPR2017-00353 and IPR2017-01218. The vacatur and remand was based upon the Federal Circuit’s earlier Arthrex decision, which held that the PTAB judges were improperly appointed under the Appointments Clause of the U.S. Constitution. The Arthrex decision from October 2019 is proving to be quite controversial, and the USPTO is seeking an opportunity to have the doctrine reversed by the U.S. Supreme Court. Continue reading “U.S. Government in Search of Arthrex Reversal”

The American Rule Is Still the Rule

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John P. Isacson

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019)

Today, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark Office (USPTO), which permits the USPTO to recover expenses against applicants who filed civil actions against the USPTO. Section 145 allows unsuccessful parties at the USPTO to file a district court action for review of a decision from the Patent Trial and Appeal Board instead of going directly to the U.S. Court of Appeals for the Federal Circuit. Traditionally, the statute has been interpreted to permit the USPTO to recover expenses such as copying costs and expert fees.

Continue reading “The American Rule Is Still the Rule”