There is something more coming, with an outstanding opinion from the Federal Circuit on the reviewability of patent trial and appellate board’s time bar decision and from the Supreme Court on the constitutionality of IPRs and the PTAB authority to institute proceedings partially.
1. The SC will grant review for only a few patents
The Supreme Court really had a hard time last year in part because so many issues were percolating at the federal circuit. In addition, the Supreme Court tends to reach consensus on patent cases, making them great issues for the court to consider when it sat with a vacancy last year. But based on our look at what’s sitting before the federal circuit now, there’s simply aren’t as many “big pictures” issue warranting high court attention.
2. The Federal Circuit will decide en banc to resolve lingering question about the proper weight of secondary consideration
Particularly since the Federal Circuit 2012 In re Cyclobenzaprine decision, courts have struggled with the framework for weighing secondary consideration when determining whether a patent is obvious under section 103. Th question is one of burdens and timings many courts refer to the prior art analysis as a”prima facie” obviousness determination, for which a patentee bears the burden to prove that secondary consideration overcomes the prima facie analysis. Others treat obviousness as a veritable melting pot, where all factors must be analyzed together.
3. The PTAB’s process for conducting IPRs is likely to change
It goes without saying that if Supreme Court determines that IPRs are unconstitutional, it would be a sea-changing victory for the patentee. But even if IPR is upheld, we expect that the decision may have an effect on how the PTAB conducts its IPR Proceedings, especially with respect to judge selection. At an oral argument, the government under heavy fire based on the possibility that panels could be stacked, a power that might argue implicates due process concerns. Even outside the courtroom, the PTAB’s practice regarding motions to amend has been heavily criticised. For example, former Federal Circuit Judge Paul Michel suggested that the review process would benefit from an “off-ramp” procedure.
4. Sovereign Immunity in Patents
With patentees seeking creative solutions to protect their patents and with state universities increasingly recognizing the value of their intellectual property portfolio, it is no surprise that the doctrine of sovereign immunity is increasingly implicated in patent litigation. Perhaps the most famous is Mylan vs. Allergan, Inc., where the patentee sold the patents to a Native American Tribe but received a license back to itself. And just a few weeks ago, the PTAB concluded in Ericsson Inc v. Regents of the University of Minnesot., IPR2017-01186 et seq., that a state university that asserted claims of patent infringement in the district court had waived the defense of sovereign immunity before the PTAB. There, one administrative law judge on the seven-judge panel went so far as to claim that the mere act of seeking a patent was itself a waiver of sovereign immunity. We expect that in the coming year, the Federal Circuit will have a chance to weigh in on this.
5. Patentees will be more open to bringing due process challenges to district court case management tool
In the interest of judicial economy, district courts have sometimes required patentees to limit the number of patents and claims that they assert at trials. Increasingly though, patentees are claiming that such limitation violates their right to a trial on each patent claim, as they represent separate and distinct inventions. It’s unclear whether those complaints have merits, but we expect that they might become more frequent going forward particularly biologics litigation, which often puts a large number of patents in play, becomes more commonplace.
6. The Federal Circuit is not done issuing guidance on venue in patent cases
In perhaps the touch of irony, one of the main issue likely to confront the Federal Circuit over the next year is where patent cases are properly brought. Though the Supreme Court’s decision in T.C. Heartland and the Federal Circuit’s decision in In re Cray offered a roadmap to start from, we expect that the Federal Circuit will be tasked with examining venue challenges with widely differing factual scenarios an environment likely to produce precedential opinions that will reshape the landscape. As a result, if patent suits become less concentrated in a few courts, the possibility of multidistrict litigation a sparingly used tool in patent cases will also increase. What effect that will have on outcomes is far from certain.