The Naples RoundtableTM Amicus Committee is responsible for making recommendations to the Officers and Advisory Board for action to be taken regarding issues before the courts in the United States. The Committee’s actions with respect to matters before the Federal Circuit is exclusive and independent of the Advisory Board, as well as anyone attending or participating in the Naples Roundtable or the Leahy Institute of Advanced Patent Studies.
Andrew S. Baluch, Chair
Hon. Sharon R. Barner
Teresa M. Summers
Policy Workshop on USPTO’s Rulemaking Authority
In September 2021, the Amicus Committee held a policy workshop to explore the scope of the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2)(A) (authorizing “regulations, not inconsistent with law, which … shall govern the conduct of proceedings in the Office”). The discussion included several of the country’s top administrative law experts from academia and government. The discussion delved into the legislative history of § 2(b)(2)(A) and considered how several recent Supreme Court decisions—City of Arlington v. FCC (2013) and Cuozzo Speed Technologies v. Lee (2016)—might impact the proper interpretation of that statute and any deference owed to the USPTO’s interpretation of that provision. In City of Arlington, the Supreme Court held that an agency’s interpretation of a statutory ambiguity that concerns the scope of its regulatory authority is entitled to Chevron deference. In Cuozzo, the Supreme Court stated that § 2(b)(2)(A) “does not clearly contain the [Federal] Circuit’s claimed limitation” i.e., that the statute is only “limited to procedural rules” as distinct from substantive rules. In light of these intervening Supreme Court decisions, the Amicus Committee considered:
- After City of Arlington, will the USPTO’s interpretation of 35 U.S.C. § 2(b)(2)(A) be owed Chevron deference?
- After Cuozzo, will the Federal Circuit continue to interpret § 2(b)(2)(A) as being limited to “procedural”—as distinct from “substantive”—rules?
- How should § 2(b)(2)(A) be interpreted?
- What new rules might the Biden Administration offer to test the scope of § 2(b)(2)(A)?
Legislative Proposal to Improve Inter Partes Reviews
In April 2021, the Amicus Committee released a legislative proposal to improve inter partes reviews (IPRs). The aim of the proposal is to improve the overall functioning of IPRs for parties on both sides of the “v”—including both Patent Owners and Petitioners alike. To this end, the proposed legislative “package deal” contains five Patent Owner-favorable provisions and five Petitioner-favorable provisions. Taken together, these provisions would increase consistency among, and decrease inefficiencies between, IPRs that are handled in the PTO and infringement litigation that are handled in the district courts. The Amicus Committee developed this balanced set of proposals with input from across the patent bar, and a draft was presented and discussed during the sixth annual Naples Roundtable conference.
Chrimar v. ALE USA
The Naples Roundtable is pleased to submit an Amicus Brief in Chrimar v. ALE USA. We argue in support of granting the petition for certiorari and expand upon two points:
First, we argue that the Federal Circuit’s finality rule is contrary to that of other circuits, as well as its own precedent. The Federal Circuit departed from the established standard for finality that has been adopted by the other Circuit courts, calling certainty provided by any court judgment into question. Moreover, the Federal Circuit departed from its own en banc rule for finality, thus intensifying the uncertainty.
Second, the Federal Circuit’s finality rule incentivizes defendants to engage in dilatory litigation tactics and other gamesmanship, which, among other things, weakens the patent system. Specifically, whenever a proceeding is pending before the PTAB, a defendant has every reason to draw out the course of litigation beyond a merits decision in hopes of overturning that decision via a later-decided ruling of an administrative agency. To dampen the effects of this gamesmanship, patentees may cede certain claims or remedies to which they are entitled in order to expeditiously reach a final judgment. We argue that these tactics are deleterious for the judicial system and may strip patentees of important rights granted by the Constitution and federal statute, weakening the patent system. Moreover, there is an asymmetry between the court and the agency: the court is at a disadvantage because the court needs to decide many issues, whereas the PTAB merely needs to decide a portion of validity.
Precedential Nominations of Olson and Fautz
In March 2020, the Naples Roundtable submitted a request for the USPTO to nominate two decisions of the Patent Trial and Appeal Board as precedential: (a) Ex parte Olson, Appeal 2017-006489 (designated Informative July 1, 2019); and (b) Ex parte Fautz, Appeal 2019-000106 (designated Informative July 1, 2019). In each decision, the Board reversed a rejection under 35 U.S.C. 101 of claims directed to medical inventions: Olson (catheter navigation system) and Fautz (MRI tomography). In each decision, the reversal was based on the 2019 Revised Eligibility Guidance. Commenting on the Naples Roundtable’s submission, Dave Kappos stated: “As chairman of the Naples advisory board, I commend the Naples Roundtable on their public advocacy in support of medical innovations at a time when the world needs them most. Battling medical emergencies like the coronavirus and improving patient outcomes, today and in the future, requires sustained R&D in medical technologies that the patent system is meant to foster. Upholding the patent eligibility of medical inventions like those in Ex parte Olson and Ex parte Fautz, and designating those decisions as binding precedent within the USPTO, will send a strong message to the world that the United States supports the patent eligibility of medical discoveries that are integrated into practical applications.”
Senate Hearings on Patent Eligibility
In June 2019, the Naples Roundtable submitted comments for inclusion into the written record of the Senate IP Subcommittee’s hearing on “The State of Patent Eligibility in America.” In its comments, the Naples Roundtable urged Congress to clarify the scope of subject-matter eligibility under Section 101 of the Patent Act and also to make clear that patents do not “preempt” innovation. To that end, the Naples Roundtable pointed to it its international comparative study on patent eligibility and experimental use, and recommended that Congress consider codifying an experimental use defense as a way to mitigate the risk of “preemption,” while also permitting a broader scope of patent eligibility.
In May 2019 The Naples Roundtable Amicus Committee filed an amicus brief on the Patent Trial and Appeal Board’s question:
Whether the service of a pleading asserting a claim alleging infringement, where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the 1 year time period for petitioner to file a petition under 35 U.S.C. § 315(b).
In response to the Board’s question, The Naples Roundtable respectfully submits that it believes standing is not a requirement under 35 U.S.C. § 315(b) for a properly served complaint to trigger the 1-year time bar.
Andrew Baluch, Teresa Summers and Jason Weil published a whitepaper containing an international comparison of the patent eligibility and experimental use defense codified in several major jurisdictions around the world (United States, Singapore, United Kingdom, Germany, France, South Korea, Japan, and China). Unlike the United States, most other countries most other countries have codified an “experimental use” defense in their patent laws, allowing any patented invention to be used for the purpose of researching, testing, and improving upon a patented invention. Those same countries also tend to permit patenting of subject matter more broadly under their patent laws than the United States. Given the U.S. Supreme Court’s concern that broad patent eligibility poses a risk of “pre-emption,” the United States Congress may wish to consider whether to codify an “experimental use” defense as part of a legislative bargain that also broadens the scope of patent eligibility under 35 U.S.C. § 101.
Proppant Express Investments, LLC v. Oren Technologies, LLC
In December 2018, the Amicus Committee filed an amicus brief in the first-ever Precedential Opinion Panel (“POP”) panel constituted by USPTO Director Iancu. The POP panel called for amicus briefing in Proppant Express Investments, LLC V. Oren Technologies, LLC, Case IPR2018-00914 (PTAB), seeking briefing to help resolve an intra-PTAB conflict regarding the interpretation regarding the inter partes review “joinder” provision of 35 U.S.C. 315(c). In its amicus brief, the Naples Roundtable advocated for a balanced approach to this provision, which empowers the USPTO to join both the same petitioner and new issues to an existing proceeding, but also allows the USPTO to deny joinder, in the USPTO’s discretion, if it perceives that the petitioner is improperly seeking a “second bite at the apple” against the patent.
Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA
As early as 2016, the Amicus Committee identified Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA as a case of exceptional importance meriting the organization’s scholarly input. The case involves an issue of first impression regarding the AIA’s first-inventor-to-file provision in 35 U.S.C. § 102(a): whether an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art. Prior to any appellate decision in the case, the Naples Roundtable filed an amicus brief in the Federal Circuit in 2016 urging the original Federal Circuit merits panel to consider Congress’ twin goals in adopting a first-inventor-to-file regime of achieving (a) greater international harmonization with other countries and (b) greater certainty regarding the scope of patent protection. After the petitioner filed a petition for writ of certiorari to the Supreme Court, the Naples Roundtable filed a cert-stage amicus brief in April 2018 urging the Supreme Court to grant the petition. In June 2018, the Supreme Court agreed with the Naples Roundtable and granted the petition. In August 2018, the Naples Roundtable filed a merits-stage amicus brief in support of neither party, which, among other things, brought to the Court’s attention the laws of other countries that do not treat such sales as prior art.