Appointment of PTAB Judges Is Unconstitutional--But Easily Remedied?

This will be a short post, because I'm in Chicago for a conference at John Marshall and don't have a lot of time to devote to it.  In addition, the case is not really related to patent remedies, but nevertheless it's pretty hard to ignore.  Today in Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit held that, under the Patent Act, Administrative Patent Judges (APJs)--the PTAB judges who preside over, among other things, IPRs--are "principal officers" of the United States; and that because they are appointed by the Secretary of Commerce rather than by the president, subject to the subject to the advice and consent of the Senate, their appointment is unconstitutional.  However, the court also concluded that it could sever the provision of the statute preventing PTAB judges from being fired without cause, and that doing so would render the judges "inferior officers" subject to removal by the Director of the USPTO and therefore constitutional.  The court vacated and remanded the case to a new PTAB panel, and stated that its ruling would only affect cases in which the PTAB rendered a final written decision and the litigants raised the appointments issue on appeal.  So IPRs are, mostly, saved, and (I should think) most final written decisions issued to date will remain valid--though I would guess there will be a petition for rehearing and possible Supreme Court review.  

This is an important case--though if you find the issues immensely confusing, join the club.  If, on the other hand,  you're a separation of powers or administrative law maven, you probably will find the issues raised in the opinion endlessly fascinating.  Either way, it's an important case.  Further discussion on Bloomberg, Law360, FedCircuitBlog, and Patents Post-Grant. 

Unwired Planet Oral Arguments

The oral arguments in the joined cases of Unwired Planet v. Huawei and Conversant v. Huawei and ZTE concluded last week.  Commentary, some of it from people who were able to attend the hearings live, is available, among other places, on FOSS Patents, IPKat, IP Watchdog, and Law360 (which quotes me).  The IP Watchdog post also notes that recordings of the arguments are available on the U.K. Supreme Court's webpage here.  I haven't had a chance to listen to these yet myself.  I would be interested in hearing how readers think the court will decide.

Dijkman on Bayer v. Richter

Léon Dijkman has posted an informative paper on Bayer v. Richter, which I blogged about recently in a post I titled Bayer v. Richter: Worst CJEU Decision Ever?  Here is a link to the paper, titled CJEU rules that repeal of provisional measure does not automatically create liability for wrongful enforcement, which is forthcoming in the Journal of Intellectual Property Law & Practice, and here is the abstract:

In its ruling in Bayer, the Court of Justice of the European Union (CJEU) found that denial of compensation to a provisionally enjoined party in case of later revocation of a patent may be allowable under Article 9(7) of Directive 2004/48/EC (the Enforcement Directive). The ruling has potentially far-reaching implications for European IP practice, which are discussed in this note. 

The author holds out some hope that the decision will be limited to at-risk launch by generic drug companies, despite some broader statements in portions of the opinion.  I hope he's right.

French Court Overturns €25 Million Patent Damages Award

The case is Mermet v. Chavanoz Industrie.  Pierre Véron recently published a post on EPLaw, titled "The largest ever patent infringement damages award in Europe (€25,000,000) overturned on appeal; patent held invalid for lack of novelty because of a public prior use; no 'morning-after pill' available to erase it," with links to a more detailed analysis and copies of the decision in the original French and in English translation.  The decision, by the Cour d'appel de Lyon, does not address the methodology the trial court used for calculating the damages.  Rather, the appellate court finds the patent in suit invalid, based on evidence that the patent owner sold the patented product to another (the company that later became the infringement defendant, as it turned out) before the effective filing date, and that an after-the-fact confidentiality agreement between the parties could not erase the public disclosure of the invention.  U.S. patent lawyers should take note of two matters:  first, that in France and most other countries, there is no "grace period" analogous to U.S. Patent Act section 102(b) exempting the applicant's public use or sale of the invention before the filing date from the scope of the prior art; but second, that in other countries secret sales (like that at issue in the U.S. Supreme Court's recent Helsinn Healthcare decision) generally do not count as prior art.  The problem for the patent owner in the French decision is that the sales weren't secret when made.

My new casebook: "Remedies in U.S. Patent Law: An Open-Source Casebook"

I am pleased to announce that LawCarta has published my new casebook, Remedies in U.S. Patent Law:  An Open-Source Casebook.  Here is a link, and here is the book description:

Remedies in U.S. Patent Law:  An Open-Source Casebook is a free, 'open' textbook designed for a one or two-credit course in U.S. patent remedies.  The casebook covers the law of permanent and preliminary injunctions, damages, and declaratory judgments. Thomas Cotter has used these materials for courses on patent remedies that he has taught at the University of Minnesota and the University of Iowa. Instructors may request access to the teacher's manual by emailing cotte034@umn.edu and creating a LawCarta account.  Model syllabi, upon request.

I will be using this next semester for my course at the University of Minnesota, and would welcome any feedback or comments, as well as questions from anyone who might be interesting in using it for their own course or seminar.  There is also a short teacher's manual available to instructors.

Unwired Planet Hearing Underway in U.K. Supreme Court

I was in Oxford last week for a conference at which I spoke on the (then-upcoming) Unwired Planet and Conversant hearings this week before the U.K. Supreme Court (see here).  I'm back in the U.S. now, but I'm following others' reporting on the hearings, which run from Monday-Thursday this week.  For reports so far, see FOSS Patents (here and here), IAM, JUVE Patent, and a preview on Bloomberg.  For my own views, see here.

American Law Institute

I am pleased to announce this morning that I have been elected as a member of the American Law Institute.  The ALI's announcement is here.  For readers who are not familiar with the ALI's work, here is its description:

The American Law Institute is the leading independent organization in the United States producing scholarly work to clarify, modernize, and otherwise improve the law.

ALI drafts, discusses, revises, and publishes Restatements of the Law, Model Codes, and Principles of Law that are enormously influential in the courts and legislatures, as well as in legal scholarship and education.

By participating in the Institute’s work, its distinguished members have the opportunity to influence the development of the law in both existing and emerging areas, to work with other eminent lawyers, judges, and academics, to give back to a profession to which they are deeply dedicated, and to contribute to the public good.