Every month, Erise’s patent attorneys review the latest inter partes review (IPR) cases and news to bring you the stories that you should know about:
What Does the End of Chevron Deference Mean for the USPTO?
In June, the U.S. Supreme Court issued a decision in Loper Bright Enters. v. Raimondo, overturning its 1984 decision Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc. and what became known as Chevron deference by courts to permissible interpretations of law by administrative agencies.
While the Loper Bright decision involved a rule promulgated by the National Marine Fisheries Service, the end of Chevron deference will affect other agencies, including potentially the U.S. Patent and Trademark Office.
The Supreme Court is currently considering whether to grant certiorari on a case that may test the new post-Chevron waters. United Therapeutics Corporation owns U.S. Patent No. 10,716,793 covering a pulmonary hypertension treatment. UTC sued Liquidia Technologies for infringement and Liquidia petitioned for IPR of the ’793 Patent.
UTC’s cert petition, filed before the Loper Bright decision, asks the court to consider whether the Federal Circuit must review de novo or for abuse of discretion “the PTO’s reliance on new grounds and new printed publications—not raised in the initial petition—when deciding to cancel patent claims.” In another question before the court, which is now moot, UTC also challenged Chevron deference.
(We reported in February 2024 on the Federal Circuit’s decision in co-pending infringement litigation between UTC and Liquidia finding that an IPR decision did not have issue-preclusive effect on parallel federal litigation until the IPR decision is affirmed on appeal or the parties have waived their right to appeal. The Supreme Court eventually declined to hear that case.)
Liquidia declined to file a response to UTC’s cert petition in the case stemming from the IPR. On July 11, not long after the Loper Bright decision, the Supreme Court requested a response from UTC, which is due August 12.
On the PatentlyO blog, Dennis Crouch noted that the Supreme Court’s request for a response “indicate[s] that at least one justice sees potential merit in the case … I believe that there is a potential that the Court will issue a grant-vacate-remand (GVR) order, asking the Federal Circuit to reconsider its deferential decision based upon Loper Bright.”
PTAB Filings Up Slightly in First Half of 2024
According to data from legal research platform Docket Navigator, PTAB filings in the first half of 2024 are slightly up from the same period in 2023. As reported by IAM, 660 new PTAB cases were filed from January to June 2024, compared with 647 in the first half of 2023. Both 2024 and 2023 remain somewhat lower than 688 cases filed in the first half of 2022.
Consistent with publicly available data on the USPTO website, the vast majority of PTAB filings continue to be IPRs:
- 669/688 (97%) new PTAB filings in the first half of 2022;
- 635/647 (98%) new PTAB filings in the first half of 2023; and
- 639/660 (97%) new PTAB filings in the first half of 2024.
The statistics on the PTO website, which are available through May 2024, continue to show that the majority of petitions – hovering around 67% – relate to electrical and computer technologies. Institution rates for matters involving these technologies, as well as bio/pharma, remain close to 70%.
More PTAB Victories for Lululemon
In May, we reported that the PTAB ruled in Lululemon’s favor in its ongoing dispute with Nike over Lululemon’s Mirror Home Gym. The Board has now invalidated all challenged claims of Nike’s other patents in the matter.
In early 2022, Nike sued Lululemon in the U.S. District Court for the Southern District of New York, alleging that the interactive Mirror home fitness device and related apps infringe six of Nike’s patents covering various aspects of fitness tracking and analysis.
As we noted in our earlier article, the Board held in Lululemon’s favor on all challenged claims of Nike’s U.S. Patent No. 10,232,220 and 12 of 20 challenged claims of U.S. Patent No. 9,278,256.
In a series of decisions in late June and early July, the PTAB has now held that all challenged claims of U.S. Patent Nos. 9,259,216; 9,259,615; 10,188,930; 10,925,225; 8,620,413 are unpatentable.
The SDNY infringement case has been stayed since February 2023 pending the outcome of the IPR challenges.
In recent months, the PTAB also has granted Lululemon’s requests to institute IPRs for patents asserted by Nike in a separate lawsuit regarding Lululemon’s alleged infringement of Nike’s FlyKnit engineered fabric. Nike also filed similar suits against New Balance and Skechers.
Other recent IPR headlines:
