December 13, 2021

Patent Litigator Glenn Forbis Interviewed by Law360 about Biggest Patent Cases of 2021

Metro Detroit patent attorney Glenn Forbis spoke to Ryan Davis of Law360 about the most important patent litigation cases of the year.

The frontrunner for the biggest case of 2021 was Arthrex. Proponents for patent rights were hoping the U.S. Supreme Court would find that IPRs were unconstitutional. In June, however, SCOTUS ruled to keep the PTAB more or less in its current form, provided the USPTO Director has authority to “review” each decision “and reach his own decision.” To comply with the Supreme Court’s ruling, the Patent Office has set up an interim Director review process whereby the Director may sua sponte initiate review of a Final Written Decision, as a party may request such a review. Because no one knows how long a Director’s review may take, it is an open question as to how many people will file such petitions over the long run.

“I think that people will stop filing them,” said Forbis. “If I were a patent owner that just lost an IPR, I wouldn’t want to go that route: It delays everything. I’d rather just get on to a Federal Circuit appeal.”

Unless the board clearly violated a rule, Forbis added, foregoing Director review and heading straight to filing an appeal is likely a better choice.

Also in June, SCOTUS ruled on the topic of assignor estoppel in Minerva v. Hologic. SCOTUS effectively placed new limits on the ability of inventors or patent owners who assign patents to a third-party from later challenging the validity of those patents in court. 

According to Forbis, the ruling prevents inventors who own and sell a company from later saying that their patents — which were hopefully sold for a profit — were worthless. Employee inventors who are required to assign their patents to employers pursuant to an employment agreement, on the other hand, will be able to challenge the validity of the assigned patents.

“It may not be easy to prove to a jury, but it’s an available defense,” said Forbis. “So, the ruling here should have a material effect on how people behave going forward.”

Patent eligibility was a topic that was front and center in several cases throughout the year. In Yu v. Apple, for example, the Federal Circuit ruled that a patent directed to a digital camera was invalid for claiming an abstract idea related to enhancing photos. The ruling caused an uproar of concern that patent eligibility restrictions could move beyond software and affect physical inventions.

“What makes everyone nervous is what looks like a trend towards expansion of the 101 law to more things that are tangible and you can put your hands on,” Forbis said. “I think it’s getting out of control. Eligibility cases are always difficult to predict, and it’s getting even harder now given these types of decisions.”

On the bright side, as the Law360 article points out, October’s CosmoKey v. Duo Security ruling from the Federal Circuit found that an authentication patent was eligible because it claimed an inventive concept and did not consider if the patent covered an abstract idea.

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