Fish attorneys John Dragseth and Nitika Gupta Fiorella authored a Law360 Expert Analysis article discussing the post-grant appeals that drove a lot of the legal activity at the Federal Circuit this past year despite the pandemic and what the notable developments in 2020 may mean for 2021.
With the ongoing pandemic, legal developments at the U.S. Court of Appeals for the Federal Circuit and elsewhere were slow last year. But post-grant appeals continue to drive much of the activity. These are the most notable developments of 2020, and what they might mean for 2021.
Arthrex: The Most Important Case of the Year
In Arthrex Inc. v. Smith & Nephew Inc., a Federal Circuit panel in 2019 held that Patent Trial and Appeal Board judges were “principal” officers who needed to be appointed by the president and confirmed by the U.S. Senate, but they had not been. To fix the problem, the panel made the judges terminable at-will — reasoning that such a change would make them inferior, not principal, officers, and that Congress would have preferred this result over scrapping post-grant review altogether.
The U.S. Supreme Court has since accepted review on the issues of (1) whether the judges were initially invalid; and, if so, (2) whether the Federal Circuit’s fix was legitimate. Oral argument will occur early this year, and we should see a decision by June or earlier.
The biggest takeaway on this case for most of you is chill out but preserve your objections. If the Supreme Court upholds the Federal Circuit’s fix, then, at most, we’re looking at a number of cases decided soon after Arthrex getting rehearing at the U.S. Patent and Trademark Office. Even if Supreme Court says that the judges were invalid and the Federal Circuit’s fix was not good enough, Congress and the PTO could still try to fix the problem via legislation.
Notably, the Federal Circuit held in Ciena Corp. v. Oyster Optics LLC, that petitioners (as opposed to patentees) can’t complain at all because they chose the inter partes review option, so that will further cut down the number of cases affected if the Supreme Court rules IPR judges are invalid. Of course, any new fix from Congress and the USPTO will certainly delay efforts to invalidate claims via IPR by a couple years, which could have unforeseen disruptive effects.
So you should still object to preserve any possible error based on Arthrex, but work hard to win on the merits if you are a patentee.
Refinements to Petitioner’s Standing to Appeal
By statute, anyone other than the government can be an IPR petitioner. But Article III limits which losing petitioners can appeal to the Federal Circuit to only those with a live “case or controversy.” The legal standard for such cases is close to that used for declaratory judgment actions, i.e., a petitioner must have some real concern that it could face an imminent suit for patent infringement. The Federal Circuit in 2020 continued an ongoing process of sharpening that law.
For example, in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., the court held that a petitioner could not rely on its marketing partner’s plan to file an abbreviated new drug application to show the necessary harm to itself. But in Adidas AG v. Nike Inc., the petitioner had standing when it had previously been sued on a different patent and the patentee had refused to grant a covenant not to sue for similar, ongoing conduct by the petitioner. And in Grit Energy Solutions LLC v. Oren Technologies LLC, a petitioner when it had previously been sued on the patent, and that action had been dismissed without prejudice.
A petitioner should understand that, as a practical matter, if it has not been threatened in some way by the patentee and does not have a product almost ready to go, it could hit the end of the road if it loses an IPR. That’s a bad thing, but as long as the petitioner has its eyes open, it might not be bad enough to dissuade the petitioner from filing.
Also, the Federal Circuit has suggested that a petitioner with no right to appeal also will not be bit by estoppel — so it can raise all its invalidity defenses in litigation and is really only out the cost of the IPR if it loses the IPR.
In short, as a prospective petitioner, you should balance these issues before spending much money if you might have a standing issue — but don’t let it wholly scare you away from filing.
More Limits on Estoppel
Post-grant challenges are largely meant to be alternative, not additional, mechanisms for invalidating a patent. As a result, they bring with them a number of estoppels to prevent duplicative challenges. One such flavor of estoppel occurs from one IPR to another — as classic collateral estoppel.
For example, in Papst Licensing GmbH v. Samsung Electronics America Inc., the court in 2019 found a patentee estopped from attacking parts of the PTAB’s analysis that were common with other IPRs where the patentee had appealed and then voluntarily dismissed its appeals. In contrast, in Power Integrations Inc. v. Semiconductor Components Industries LLC, another 2019 decision, the patentee was not estopped when it had never appealed at all from the prior IPRs — because the prior patent was not in real dispute between the parties and thus the patentee had no incentive to fully litigate it.
The takeaway from these cases for 2021 is to be careful in coordinating your battles when you are in a multipatent war.
The more typical estoppel is one that prevents a petitioner from presenting in litigation prior art that it could have brought in an IPR. One persistent issue is whether a litigation defendant can present on-sale prior art that corresponds to paper prior art (e.g., an owner’s manual) raised in IPR for the on-sale product.
Some have suggested that the defendant should have to show that the on-sale evidence is superior and separate — e.g., that the physical product taught more than the owner’s manual. The Federal Circuit hasn’t hit on this point, but district courts have been reticent to adopt a bright-line rule.
Moving forward, petitioners would be well-served to consider the relative quality of such prior art evidence before filing an IPR petition — though the technical aspects of estoppel may be over-ridden by more practical concerns that the prior art may not be so great at all if it didn’t resonate with the PTAB.
Time to Stop Complaining About Reviewability
Last term, the Supreme Court decided Thryv Inc. v. Click-to-Call Technologies LP, holding that a patentee could not complain about the institution of an IPR because Title 35 of the U.S. Code, Section 314(d), prevents judicial review of institution decisions — absent major “shenanigans” by the U.S. Patent and Trademark Office.
The gist of the court’s holding is that, just as patentees cannot complain about institution, petitioners cannot complain about noninstitution — and that is a much bigger deal. That is because the PTAB has been declining institution for all sorts of policy reasons even if a petitioner’s prior art is good. The most common example includes refusals to institute under the Fintiv factors where the patent is in a parallel fast-track litigation.
Efforts to appeal or seek mandamus review of such rulings have all failed, e.g., Cisco Systems Inc. v. Iancu, so all eyes are on an Administrative Procedure Act suit filed by several technology companies in the U.S. District Court for the Northern District of California that challenges similar actions by the USPTO.
This year, keep an eye on the progress of the APA suit. It may be a last clear chance for petitioners to obtain review of noninstitution decisions. Also, consider the risk of noninstitution before you file a petition. Noninstitution doesn’t result in any estoppel for later litigation, so the one real downside is the cost of preparing and filing a petition. That can certainly be substantial, but if you go in with your eyes open to the risk of noninstitution, the sting will be much less even if the petition fails.
Development of the Law of Obviousness
The cases above deal with post-grant procedure. In contrast, the ever-present and ever-developing substantive issue for all appeals is obviousness.
In 2020, the Federal Circuit repeated points it has made in the past to remind us what the law really is. For example, in B/E Aerospace Inc. v. C&D Zodiac Inc., the court reinforced that not all claim limitations have to be taught by the prior art — rather, a “matter of common sense” can fill the gaps. The particular invention had been the use of two different recesses in an airplane wall to permit reclining of a back seat without affecting the size of an adjacent bathroom, where the prior art had shown one recess.
Other recent cases have addressed whether objective indicia can be addressed after a court makes conclusions about obviousness or must be included in the main analysis. In Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. in 2019, the Federal Circuit refused to fault a district court for doing the former, since “the substance of the court’s analysis makes clear that it properly considered the totality of the obviousness evidence in reaching its conclusion.”
And expert testimony is always in-play for obviousness cases, with the court sometimes rejecting testimony as too conclusory and sometimes ignoring problems with experts if the technology is simple enough.
Our advice this year is to back up and refocus on obviousness. We see too many cases in which the parties step mechanically through the mantra of Reference A, Reference B and motivation to combine. That is certainly the typical analytic framework, but the best presentations explain more generally — and with reasoning tied to the particular situation — why the invention was cool or counterintuitive, or was instead something that any skilled artisan would have come up with.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
 941 F.3d 1320 (Fed. Cir. 2019).
 United States v. Arthrex, Inc., Docket No. 19-1434 (cert. granted Oct. 13, 2020).
 958 F.3d 1157, 1159 (Fed. Cir. 2020) (Order).
 See 35 U.S.C. § 311(a).
 956 F.3d 1374, 1377 (Fed. Cir. 2020).
 963 F.3d 1355, 1357 (Fed. Cir. 2020).
 957 F.3d 1309, 1319 (Fed. Cir. 2020).
 924 F.3d 1243 (Fed. Cir. 2019).
 926 F.3d 1306, 1313 (Fed. Cir. 2019).
 See 35 U.S.C. § 315(e)(2).
 See, e.g., Cal. Inst. of Tech. v. Broadcom Ltd., 2-16-cv-03714 (C.D. Cal. Aug. 9, 2019) and Polaris Indus. Inc. v. Arctic Cat Inc., 0-15-cv-04475 (D. Minn. Aug. 15, 2019).
 Cisco Sys., Inc. et. al. v. Iancu, Case No. 5:20-cv-6128 (N.D. Cal., filed Aug. 31, 2020).
 962 F.3d 1373 (Fed. Cir. 2020).
 945 F.3d 1184 (Fed. Cir. 2019).
 Id. at 1194.
 See TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352 (Fed. Cir. 2019).
 See Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (expert error was harmless where invention was just putting heat-reflective material in certain locations on fabric).
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.