2022: Year in Review – Top Patent Developments
February 6th, 2023
Here’s a roundup of some of the most important developments in US patent law in 2022.
OpenSky v. VLSI Technology
Kathi Vidal, director of the US Patent and Trademark Office (USPTO), recently issued two decisions involving abuse of the inter partes review (IPR) process.
As Bloomberg reported,
Vidal determined the petitioners in both cases, Patent Quality Assurance LLC and OpenSky Industries LLC, abused the Patent Trial and Appeal Board’s inter partes review process, attempting to leverage their patent challenges to extract money from other participants. Both companies filed challenges to VLSI patents underlying a $2 billion March 2021 patent infringement verdict against Intel Corp., just one part of a sprawling battle between Intel and VLSI.
Vidal then dismissed PQA from the proceeding and ordered it to show cause why it shouldn’t be ordered to pay damages to VLSI, including attorney fees, to compensate for its time and effort in the proceeding.
This order arose out of the US Supreme Court’s 2021 Arthrex decision, in which the Court found the IPR system unconstitutional because it gave too much authority to the Patent Trial and Appeal Board (PTAB) administrative judges.
The Court resolved the problem by taking authority from the PTAB and giving it to the head of the USPTO, who is nominated by the President and confirmed by the Senate.
As Bloomberg noted, this was the first time that Vidal had issued sanctions against a patent challenger for abuse of the patent system.
In her order, noted Bloomberg,
Vidal cited evidence that OpenSky asked VLSI and Intel for money in exchange for its cooperation in the patent review process, pointing to the fact that OpenSky contacted Intel on the day institution was granted and was willing to offer its advocacy to either side of the proceeding, dependent on monetary compensation.
Thaler v. Vidal
In a year that saw artificial intelligence (AI) take great leaps ahead, with applications like ChatGPT, the Federal Circuit ruled that only humans – and not artificial intelligence (AI) can be “inventors” under US patent law.
The USPTO denied patent applications that listed as the inventor, an AI system, called a “Device for the Autonomous Bootstrapping of Unified Science” (DABUS).
The court noted that
The Patent Act expressly provides that inventors are “individuals.” Since 2011, with the passage of the Leahy-Smith America Invents Act, the Patent Act has defined an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” … The Act similarly defines “joint inventor” and “coinventor” as “any 1 of the individuals who invented or discovered the subject matter of a joint invention.”
The Patent Act doesn’t define “individual.” However, the US Supreme Court has stated that it “ordinarily means a human being, a person.”
As we discussed in this article, the US Supreme Court granted cert in this case involving life science patents, even though the US Solicitor General filed an amicus (“friend of the court”) brief recommending that the Court deny the petition.
The question before the court is:
Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “ ‘time and effort,’….
The appeal to the Supreme Court came after a February 2022 decision by the Federal Circuit that claims of two Amgen patents related to its Repatha cholesterol medication are not enabled because practicing their full scope would require "undue experimentation." The patent claims are directed to antibodies that bind to amino acids of the PCSK9 protein and block PCSK9 from binding to LDL receptors.
The Court’s decision will likely be one of the top patent stories for 2023.
Apple, Broadcom, and the California Institute of Technology
This is another collection of patent disputes that may result in a Supreme Court decision in 2023.
The linked cases have a long history. In 2016, the California Institute of Technology sued Apple and Broadcom, alleging that they and other companies violated several of its patents on Wi-Fi technology used in the iPhone, iPad, and other Apple products.
A jury found Apple and Broadcom liable for infringement in 2020 and awarded Caltech $1.1 billion in damages.
In 2022, the Federal Circuit ruled that the damage award wasn’t justified by the evidence at trial.
The court said that it would no longer be following its own 2016 precedent in Shaw Industries v. Automated Creel.
Apple petitioned for a writ of certiorari, presenting the question:
Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e)(2) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.”
Apple’s petition noted that
This case concerns the interpretation of the IPR estoppel statute, which bars an IPR petitioner from asserting in a district court action that a patent claim is invalid on any ground the petitioner “reasonably could have raised during th[e] inter partes review.” 35 U.S.C. § 315(e)(2) (emphasis added). For several years, the Federal Circuit interpreted that provision according to its plain text as applying estoppel only to grounds that the petitioner reasonably could have raised in the instituted inter partes review. In this case, however, the Federal Circuit overruled its prior precedent and held that the statute broadly applies estoppel to all grounds that the petitioner reasonably could have raised in the initial petition requesting that the Patent Office conduct an inter partes review.
In January, the Supreme Court issued a CVSG – Call for the Views of the Solicitor General – to seek input from the Biden administration. This means that at least four of the justices think that the case may be suitable for Supreme Court review but they’re seeking other opinions before they decide whether to take up the case.