is a Parter with Leason Ellis. Practicing for over thirty years, Rob Isackson is an accomplished, front-line IP litigator, counselor, and advisor fluent in all aspects of intellectual property: patents, trade secrets, trademarks, copyrights and designs. With a primary focus on IP litigation at the trial level, particularly patent and trade secret disputes and commercial disputes over technology issues, Rob’s IP practice includes appellate litigation as well as providing strategic counseling, advice and opinions on strength of IP rights, freedom to operate and litigation risks, patent and trademark prosecution, portfolio assessments, trade secret audits, negotiation and drafting of IP transactions and agreements, and M&A IP due diligence.
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On June 25, 2019, the New York Intellectual Property Association (NYIPLA) filed an Amicus Brief in support of the Respondent in Peter v. NantKwest, Inc., No. 18-801, pending before the Supreme Court. NantKwest raises the issue of whether patent applicants who are dissatisfied with U.S. Patent and Trademark Office (USPTO) decisions and subsequently appeal to the U.S. District Court of the Eastern District of Virginia must pay USPTO staff attorney salaries as part of “[a]ll the expenses of the proceedings” under 35 U.S.C. Section 145, which allows applicants to pursue a civil action against decisions of the USPTO Director.
In Henry Schein, Inc. v. Archer & White Sales, Inc., Case No. 17-1272, Justice Brett Kavanaugh authored an opinion applying a statutory construction principle to the Federal Arbitration Act (FAA) that may foreshadow how the new Court, applying the same principle, will dramatically reshape how federal courts must approach patent eligible subject matter challenges by eliminating the judicial exceptions—abstract ideas, laws of nature and natural phenomenon—and thus moot the debate that has followed (and preceded) the Court’s Alice decision. Does Henry Schein, reflecting a unanimous Court’s interpretation of a statute, reflect a shift to now interpreting statutes such that exceptions not found in the text cannot be applied? Certainly, such an argument can be made that the three judicial exceptions to patent eligibility, which courts at all levels throughout the land have struggled over since their inception and which nowhere appear in the text of the Patent Act, could be found, unanimously, inapplicable at the Court’s next review of the issue.
After reviewing the way the term “person” is used throughout the statute it is clear that in some provisions of the Patent Act, the term necessarily should be interpreted to include the government (e.g., 35 U.S.C. § 296(a), expressly including government in the definition of “person”), while in other provisions the term “person” should be interpreted to exclude the government (see, e.g., 35 U.S.C. §§ 3(a) and 6(a), which clearly exclude the governmental entities like the USPS, but would include individuals in the government’s employ). Accordingly, reliance on universal definitions from the Dictionary Act, 1 U.S.C. §§ 1 and 8, governing the U.S. Code in general, and likewise on other general definitions of “persons” from relevant case law (e.g., Cooper), may well cause inadvertent problems with respect to the Patent Act. Rather, as set forth below, the answer to the question posed by this case should depend on the legislative context relating to creation of various post-issuance patent challenge proceedings and the PTO’s longstanding interpretation of “person” to include the governmental entities for purposes of ex parte and inter partes reexaminations.
On Friday, July 20, 2018, the New York Intellectual Property Association (“NYIPLA”) filed an amicus brief arguing that the Petition for Writ of Certiorari should be granted in RPX Corp. v. ChanBond LLC, No. 17-1686. See the NYIPLA’s website for the full Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party, RPX Corp. v. ChanBond LLC, No. 17-1686 (July 20, 2018). This case raises the important question of whether the Court of Appeals for the Federal Circuit (“Federal Circuit”) can refuse to hear an appeal by a petitioner from an adverse final written decision in an inter partes review (“IPR”) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for dissatisfied parties to appeal to the Federal Circuit.