The U.S. Patent and Trademark Office (PTO) has responded to the Supreme Court ruling in the so-called Arthrex case, which affects how the agency will handle inter partes reviews (IPR) decided by administrative patent judges (APJs). PTO said litigants to IPRs can request a review by the director of the agency only in limited circumstances, however, potentially limiting litigants to one administrative path following an unfavorable IPR outcome.

The Supreme Court of the U.S. delivered its decision in the case of Minerva v. Hologic, a case that tested the boundaries of the doctrine of assignor estoppel, which bars a patent's seller (assignor) from attacking the patent's validity in subsequent patent infringement litigation.

In a split decision delivered June 21, the U.S. Supreme Court resolved the dilemma created by the constitutional non-reviewability of decisions rendered by the Patent Trial and Appeal Board (PTAB). The Supreme Court’s solution is to make those PTAB decisions reviewable by the director of the Patent and Trademark Office (PTO), although the PTO director’s discretion regarding which PTAB cases should be reviewed may itself prove highly controversial in the months and years to come.

The Supreme Court heard the case of Minerva Surgical Inc. v. Hologic Inc., which takes up the question of assignor estoppel for patents, but the discussions that peppered the April 21 hearing lent little clarity as to how the nine justices will decide the case.

Roughly four years after Intuitive Surgical Inc. petitioned for an inter partes review for a patent owned by Ethicon Endo-Surgery Inc., the Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) finding that the first 14 claims in Ethicon’s 9,585,658 patent are invalid. While the fate of two other claims are still up in the air pending remand to the PTAB, the net effect of the hearing was significantly damaging to an Ethicon patent for surgical staplers that has been in place for only four years.

The case of Fitbit Inc. v. Valencell Inc. has seen the usual number of twists and turns as it wended its way through Article III courts and an inter partes review (IPR), but a U.S. Supreme Court case that requires that all claims in an IPR be reviewed was decided during the Fitbit IPR.

The Supreme Court has declined to hear three cases that questioned the inter partes review (IPR) process for patent litigation, although the petition for cert for the Arthrex Inc. v. Smith & Nephew Inc.; Arthrocare Corp.; and the United States of America case is still pending. Should the Supreme Court pass on Arthrex, the remaining affected IPR cases will have to be relitigated at the Patent Trial and Appeal Board (PTAB), which may give those patent holders another chance to restore their patents.

The U.S. Patent and Trademark Office (PTO) has posted a notice of proposed rulemaking in response to a case decided by the Supreme Court in 2018, SAS v. Iancu, and the first item on the PTO agenda is to formally require that an inter partes review (IPR) consist of an exhaustive review of all the claims contested by the petitioner.

The U.S. Patent and Trademark Office (PTO) has posted a notice of proposed rulemaking in response to a case decided by the Supreme Court in 2018, SAS v. Iancu, and the first item on the PTO agenda is to formally require that an inter partes review (IPR) consist of an exhaustive review of all the claims contested by the petitioner.