It has been quite a week for the status quo at the USPTO. First the Supreme Court ruled in Cuozzo v Lee that the decision to institute an inter partes review was not appealable and that the PTO was correct to use the broadest reasonable interpretation standard when reviewing claims. Then, yesterday, the Court of Appeals for the Federal Circuit (CAFC) declined to hear a case en banc around whether the same three judges that make the institution decision for an IPR should also make the ultimate decision on validity.
In the case, Ethicon Endo-Surgery v Covidien, 10 of the 11 judges ruled against hearing the case en banc, but what was interesting was the strength of the lone dissent from Judge Newman, the longest serving judge on the CAFC. In it she insisted that: “The current practice of assigning the same PTAB panel to both institute and conduct an inter partes review is not only contrary to the statute, but has the taint of prejudgment.”
Newman also dissented in the CAFC’s ruling in Cuozzo v Lee so her distaste for how the post-issuance proceedings have been implemented is well known. But, in her concluding comments she then goes further in warning of the broader implications of the USPTO’s approach for the patent market as a whole:
“It is our judicial obligation to ensure agency compliance with statutory text and purpose. The departure by the PTO is not only contrary to the statute, but has devastating consequences for the public confidence in post-grant proceedings and the patent system as a whole. The nation’s economic health depends on public confidence in an unbiased and balanced patent system.”
As Covidien and Cuozzo have shown, Judge Newman cuts a lonely figure among her Federal Circuit colleagues and the Supreme Court justices. Hers is a lone voice, but it’s one that many members of the patent community would agree with.