In addition to the impact of several key decisions in 2019, there are several important cases on the Supreme Court's docket in 2020 that are relevant to IPR institutions. The Supreme Court has agreed to consider whether a petition for an IPR was filed within the one-year window provided by 35 USC § 315(b). Dex Media Inc. v. Click-To-Call Technologies, LP, Case No. 18-916 (S. Ct. June 24, 2019) (cert granted). Dex's cert petition also asked the Supreme Court to consider whether an infringement suit that was voluntarily dismissed triggers the IPR time bar. While the PTAB has long said that it does not, the Federal Circuit in this case said that position was wrong. However, the Order granting cert does not include that issue.
Although the Supreme Court has not granted cert to any §101 cases, we can anticipate the Federal Circuit to issue several more precedential opinions to further clarify patent eligibility unless Congress beats them to it. The Federal Circuit's opinion in Cellspin Soft, Inc. v. Fitbit, Inc. is likely to have an impact on the types of allegations contained in the patentee's complaint with respect to the novel aspects of their patent. Addressing patent eligibility at the motion to dismiss stage of a case, the Federal Circuit vacated a district court's grant of a motion to dismiss, finding that the district court improperly failed to accept as true the patent owner's factual allegations that the asserted claims were directed to an inventive concept. In addition to holding that patents granted by the USPTO are presumed valid under § 101, the Court's opinion will likely lead to patentees pleading additional facts related to the novel aspects of their patent in order to avoid an early dismissal.
Additionally, in all cases filed after July 25, 2019 and assigned to Judge Rodney Gilstrap, defendants are now required to serve "eligibility contentions" no later than 45 days after receiving service of the "Disclosure of Asserted Claims and Infringement Contentions." Standing Order Regarding Subject Matter Eligibility Contentions Applicable to All Patent Infringement Cases Assigned to Chief District Judge Rodney Gilstrap (E.D. Tex. July 25, 2019) (Gilstrap, J). The confluence of timing requirements between P.R. 3-3 and the new Standing Order suggests that the eligibility contentions are envisioned as part of the invalidity contentions.
Finally, the constitutionality of the IPRs may continue to be at issue following the controversial Federal Circuit decision in Arthrex, Inc. v. Smith & Nephew, Inc., which held the appointment of administrative patent judges (APJs) at the PTAB was unconstitutional. The Court found that PTAB judges were appointed as if they were "inferior officers" but vested by the PTAB with authority that is reserved for Senate-confirmed "principal officers." The decision creates uncertainty in dozens of IPR proceedings. While the full impact of this decision remains unclear, it appears the holding will immediately affect many pending cases. Some estimates note that at least 200 AIA reviews may be subject to rehearing. RPX Insight (Nov. 8, 2019). Similarly, the Supreme Court's decision in Collabo Innovations Inc. v. Sony Corp. (petition filed Nov. 12, 2019) will address whether the retroactive application of IPRs to a patent that issued before the passage of the AIA violate the Takings Clause and Due Process Clause of the Fifth Amendment. A decision finding IPRs to be unconstitutional to pre-AIA patents will markedly limit the usefulness of IPRs for a great many patents for the near future.
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