IPR process creates bias, Ethicon says

The Patent Trial and Appeal Board’s (PTAB) process of allowing the same three judges to decide whether to institute an inter partes review (IPR) and on the validity of the patent in question creates legal biases, Ethicon Endo-Surgery has argued.

Ethicon, a subsidiary of Johnson & Johnson, filed a petition yesterday, February 29, at the US Court of Appeals for the Federal Circuit requesting an en banc review of an earlier decision to revoke its patent, US number 8,317,070.

The ‘070 patent covers a surgical device that seals skin tissue. It was invalidated by the PTAB in 2014 on the grounds it was obvious after medical device maker Covidien challenged it.

Last month, LSIPR reported that the federal circuit upheld the PTAB’s ruling.

In its en banc petition, Ehticon said the rule surrounding IPR judges is different to what Congress intended when it passed the America Invents Act (AIA).

“Congress did not intend for PTAB panels to exercise this gate-keeping function, and as purely adjudicative bodies they are neither inclined nor equipped to apply executive discretion or systemic considerations in deciding whether to institute review,” Ethicon said.

“En banc review is warranted to ensure the fairness of the IPR system and its compliance with Congress’s bifurcated decision-making procedure,” the company added.

Ethicon is not alone in its frustrations with the combining of judges' duties at the PTAB.

Judge Pauline Newman wrote a dissenting opinion in last month’s federal circuit ruling. Newman argued that biases against patent owners emerge out of the current process.

Her view was supported by the American Intellectual Property Law Association which said, in a comment cited by Ethicon in its petition, that judges are “in the position of defending their prior decision to institute the trial”, creating an “actual or perceived bias against the patent owner”.