(Reuters) – A U.S. appeals court on Thursday heard a bid by Apple Inc, Google Inc, Intel Corp and others to revive their challenge to a U.S. Patent and Trademark Office policy that made it harder to contest the validity of patents issued by the agency.
A three-judge panel of the U.S. Court of Appeals for the Federal Circuit had pointed questions for both sides in the case, which was brought by Apple, Google, Intel, Cisco, and Edwards Lifesciences over a PTO rule governing the power of administrative judges to reject patent challenges.
The PTO’s “inter partes review” process allows parties to challenge patents before the agency’s Patent Trial and Appeal Board. The proceedings are popular with big tech companies and others that are often targeted with infringement lawsuits as an efficient way to head off the claims.
Companies including Tesla, Honda, Comcast and Dell filed briefs in support of the plaintiffs at the Federal Circuit.
Denials of inter partes review petitions rose after an internal PTO rule in 2018 outlined that judges can reject petitions based on the progress of related court litigation and other factors. A California federal court dismissed the companies’ lawsuit challenging the policy in 2021, citing U.S. Supreme Court rulings that decisions about granting the petitions cannot be appealed.
The Supreme Court rejected petitions to review separate challenges to the rule by Apple and generic drugmaker Mylan Laboratories last year.
A loss at the Federal Circuit would leave companies with no way to challenge any rule governing the institution of inter partes reviews even if it is unlawful, the companies’ attorney Catherine Carroll of Wilmer Cutler Pickering Hale & Dorr told the Federal Circuit during oral arguments Thursday.
But Circuit Judge Richard Taranto responded that the policy was not in the same “ball park” as a violation of federal law.
The PTO’s attorney Weili Shaw of the U.S. Department of Justice cited the Supreme Court in arguing that the office’s director has “unreviewable discretion” to deny inter parties review petitions.
“You’re saying her discretion is so vast that even the procedure under which she should be exercising that discretion is outside of court review?” Circuit Judge Kara Stoll asked.
The case is Apple Inc v. Vidal, U.S. Court of Appeals for the Federal Circuit, No. 22-1249.
For the challengers: Catherine Carroll of Wilmer Cutler Pickering Hale & Dorr
For the PTO: Weili Shaw of the U.S. Department of Justice
Read more:
Apple, Google, others lose court challenge to patent review policy
Apple, Google team up to sue patent office over ‘invalid’ policy change
Apple, Mylan lose Supreme Court bids to challenge patent review rule
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