A U.S. appeals court has ruled that tech giants including Apple, Google, and Cisco Systems can sue the U.S. Patent and Trademark Office (PTO) to challenge a rule that reduced the number of patent-validity proceedings at a USPTO tribunal. The ruling reverses a previous decision by a California federal court to dismiss the companies’ lawsuit, citing the possibility that the PTO may have failed to go through a required public notice-and-comment rulemaking process.
The PTO’s Patent Trial and Appeal Board is popular with big tech companies, which often use the board’s “inter partes review” process to contest patents they are accused of infringing. However, an internal rule gave the agency’s judges greater discretion to deny inter partes review petitions, which the companies claim “dramatically reduced access” to the process. In response, Apple, Google, Cisco, Intel, and Edwards Lifesciences sued the PTO in 2020, arguing that the rule undermined the role inter partes review plays in “protecting a strong patent system” and violated federal law.
Several other companies, including Tesla, Honda, Comcast, and Dell, filed briefs at the Federal Circuit supporting the plaintiffs. The California court initially dismissed the case in 2021, citing U.S. Supreme Court rulings that Patent Trial and Appeal Board decisions on whether to review inter partes review petitions cannot be appealed. However, the appeals court rejected the companies’ arguments that the rule was arbitrary and violated U.S. patent law. Still, it said the PTO might have been required to hold a period of public notice and comment before making the rule.
In response to the ruling, a Google spokesperson said the company appreciates the decision and looks forward to making its case at the lower court. A Cisco spokesperson said the ruling reinforces that the PTO’s patent review proceedings are “an important vehicle to preserve a balanced patent system, protect innovation, and assure patent quality in the United States.” Representatives for the other plaintiffs have yet to respond to requests for comment.
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The ruling is significant for the tech industry as it highlights companies’ ongoing challenges in protecting their intellectual property. The ability to challenge the validity of patents is crucial for companies often targeted with patent lawsuits, and the inter partes review process is seen as a vital tool for doing so. The ruling suggests that the PTO may have overstepped its authority in limiting access to this process and could open the door for similar challenges in the future.
Overall, the ruling underscores the importance of ensuring that patent review procedures are transparent and fair and that companies can protect their innovations without undue restrictions. As technology evolves and innovations emerge, these issues will likely become even more critical in the years ahead.