The Supreme Court has left in place differences in patent review standards that the life sciences industry has criticized.
The high court
denied Merck & Cie’s request for
of a decision by a panel of the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit uses a different standard to review
decisions by the Patent and Trademark Office’s Patent Trial and Appeal Board
(PTAB), which makes it more difficult to overturn a PTAB
decision than one issued by a federal district court.
In the Federal Circuit’s denial of Merck & Cie’s petition that the full appeals court review the three-judge panel’s decision invalidating patent claims, four of the Federal Circuit judges suggested there are benefits to having the same standard for the PTAB and district courts and blamed Congress for the lack of clarity on the issue.
Judge Kathleen M. O’Malley wrote that
Congress knew how to make
the standards the same when it
was writing the America Invents Act that created the PTAB and its new patent
validity proceedings, yet didn't do so. And that is “not an inconsistency or
oversight I believe we can correct,” she stated.
The same day that it denied review in Merck & Cie v. Gnosis, the Supreme Court did the same in MCM Portfolio LLC v. Hewlett-Packard Co., rejecting a petition that questioned the constitutionality of PTAB proceedings. And on June 20, the high court in Cuozzo Speed Techs., LLC v. Lee upheld in a decision the PTAB's use of the “broadest reasonable interpretation” (BRI) standard for determining the meaning of disputed patent claim terms rather than the “plain and ordinary meaning” standard used in federal courts.
The Supreme Court
appears to have basically let the 6
old PTAB carve out its place in the world. “The decision is bad for patent
owners, especially for biopharmas,” Bernard Knight, a patent litigator with
McDermott, Will & Emery , in Washington,
and former PTO general counsel, told me in a June 21 interview after Cuozzo was issued.
He noted that the Cuozzo decision expanded the PTAB’s authority. “These little court battles aren't where they should be looking for a remedy. They should be looking to Congress,” he said.
Stay on top of new developments in health law and regulation with a free trial to the Health Law Resource Center.
Learn more about Bloomberg Law and sign up for a free trial.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)