by Dennis Crouch
The pending petition in Nike v. Adidas asks the Supreme Court whether it is proper for the Patent Trial & Appeal Board (PTAB) to raise sua sponte new grounds of unpatentability against a substitute claim added during an inter partes review proceeding. The government, as a respondent in this case, argues that the PTAB can create its own reasons for rejecting newly-added claims so long as the patent owner is given sufficient notice and a chance to respond.
However, the case intrigue has recently heightened due to a somewhat chaotic saga involving the PTAB. Key figures involved include former PTAB Chief Judge Ruschke, current Chief Judge Boalick, and Judge Michael Fitzpatrick, who was recently justified as a wronged-whistleblower.
The Supreme Court petition was submitted amidst revelations of secretive maneuvers within the Board. These questionable practices include an abrupt panel expansions and judge replacement without notifying involved parties. Specifically, in the Nike v. Adidas IPR, the Board panel was first expanded to include Chief Judge Ruschke and then Deputy Chief Judge Boalick after all parties had finished their arguments and opinion writing had begun. The process also witnessed the replacement of Judge Fitzpatrick after he expressed discontent over the panel’s expansion, prompting his removal from all America Invents Act (AIA) cases.
Judge Fitzpatrick’s ousting ignited a legal battle against the USPTO, which recently concluded with a victory for Fitzpatrick at the Merit Systems Protection Board (MSPB). Fitzpatrick alleged that the USPTO had manipulated the inter partes review process in the Nike v. Adidas case, inappropriately expanding the PTAB review panel and delaying the final decision. Furthermore, Fitzpatrick’s whistleblowing disclosures extended beyond the PTAB, unearthing a misrepresentation by the Solicitor General to the Supreme Court regarding the frequency of expanded panels during the Oil States proceedings. In briefing in the case, the Solicitor General recently apologized to the Supreme Court, expressing regret for the unintended misinformation. The SG’s brief indicates that they only recently learned of the underlying drama.
In light of these troubling revelations, the Solicitor General suggests the Supreme Court grant, vacate, and remand Nike v. Adidas, offering the petitioner a chance to present arguments based on this new information to the Federal Circuit, and allowing the Federal Circuit to consider these points in the first instance.
Interestingly, this practice of unannounced judge replacements parallels the Federal Circuit’s tactics in the infamous Novartis case. Although the Adidas name is still on the case, the company has formally requested not to be involved in the appeal, citing a settlement reached with Nike.