Welcome to another edition of Skilled in the Art. I'm Law.com IP reporter Scott Graham. Today I'll look at the implications of the Federal Circuit's en banc decision Monday on PTAB appealability. I've also got a quick chat with a former ITC commissioner who's settling into a new job. Email me your thoughts on these issues or others at [email protected]. Or find me on Twitter at @scottkgraham.

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Who's Afraid of Oil States? Not En Banc Federal Circuit

Imagine you're a Federal Circuit judge. You're presented a thorny question about the appealability of certain PTAB decisions. Originally you thought “not appealable.” Then the Supreme Court made some cryptic remarks about “shenanigans” that arguably changed the playing field. You convened the entire en banc court and held more than an hour of arguments last May. A few weeks later the Supreme Court said, “Wait a minute, maybe this whole PTAB thing is unconstitutional.”

Now you tell me—would you decide that case if you didn't have to?

The biggest surprise about Monday's decision in Wi-Fi One v. Broadcom is that the Federal Circuit issued it at all. The Supreme Court could render Wi-Fi One purely academic in the next few months if it wipes out inter partes review altogether in Oil States v. Greene's Energy.

But the Federal Circuit soldiered on and ruled that whether an IPR petition is timely filed is an appealable issue, even though it's typically part of the PTAB's decision to institute proceedings.

So my very first takeaway is that either the Federal Circuit judges are reading the tea leaves like everyone else—the high court sounded disinclined at November oral arguments to grant the constitutional challenge (though of course you never know). Or perhaps the Federal Circuit simply trusts its process and eight months is the usual gestation period for an en banc decision.

(Whatever its rationale, the decision is a big win for McKool Smith partner Douglas Cawley, and at least a temporary setback for Broadcom's lawyer, Dominic Massa of Wilmer Cutler Pickering Hale and Dorr.)

Anyway, I cracked on the Federal Circuit last October when it couldn't muster a majority in its en banc Aqua Products decision on PTAB claim amendments. Credit to the court this time for forging a clear majority even in the shadow of Oil States.

By the way, did you notice that Judge Kathleen O'Malley was the plurality author in Aqua Products, with Judge Jimmie Reyna writing separately? This time the roles were reversed, with Reyna writing the Wi-Fi One majority and O'Malley concurring separately. The two also called on their colleagues—again, separately—to consider the constitutionality of IPRs last spring, adding momentum to the Oil States certiorari push.

It seems fair to say that Judges Reyna and O'Malley are not big fans of IPRs, but if they are constitutional then they see the playing field as tilted too heavily toward accused infringers. At the other end of the spectrum would be Judge Todd Hughes, who issued dissents in Aqua Products and Wi-Fi One that sided with the PTO and petitioners.

The Next Step on Timeliness: Discovery

As I noted in my story yesterday on Wi-Fi One, the focus now is going to shift to how much discovery patent owners can get about relationships between PTAB petitioners and other entities previously sued for infringing the same patent. Reyna's Wi-Fi One opinion sends the case back to the three-judge panel “to consider in the first instance the merits of Wi-Fi's time-bar appeal.”

Baker Botts partner Eliot Williams points out that Judge Reyna sat on the three-judge panel too, and wrote that “I agree with the majority that Wi-Fi One has neither shown Broadcom to be in privity with the Texas defendants nor a real party in interest in the Texas litigation.” So on remand the court might simply stick with its original decision. If not, Williams blogs, “the panel would likely need to address the PTAB's discovery rules, an area that the Federal Circuit has so-far left underdeveloped.”

Another open issue is whether petitioners will be able to appeal decisions not to institute proceedings based on timeliness. Those are trickier because they never make it to final written decision. Ropes & Gray PTAB chair Scott McKeown says such challenges might now be brought in district court under the Administrative Procedures Act. “The few such challenges brought so far have been unsuccessful,” McKeown says, “but the CAFC's Wi-Fi One decision may change that.”

Same Issue Brewing at International Trade Commission

Haven't got your fill of appealability? The same issue is brewing at the Federal Circuit with regard to the International Trade Commission. Amarin Pharma, which markets an FDA-approved omega-3 supplement, wants the ITC to open a 337 investigation into alleged false labeling of competing omega-3 products. The commission declined last fall after the FDA cautioned that enforcing the Food, Drug & Cosmetic Act is the FDA's bailiwick.

Amarin and a King & Spalding team led by partner Ashley Parrish have filed an emergency motion asking the Federal Circuit to direct the ITC to open the investigation. He asks that the case “be returned to the commission and Amarin's claims considered on their merits.”

Not so fast, an Orrick Herrington & Sutcliffe team replied last week on behalf of the supplement companies. “Under the plain text of the statute that Amarin invokes as the basis for this court's jurisdiction, 19 U.S.C. § 1337(c), an ITC order declining to initiate an investigation is not a decision reviewable in this court,” Orrick's Mark Davies writes.

McKool Smith Snags Former ITC Commissioner

Overall, Section 337 activity seems to be on the upswing at the ITC. So McKool Smith is pleased to have added former ITC Commissioner F. Scott Kieff to its team. An appointee of President Obama, Kieff left the ITC last June following a 3 1/2 year stint. McKool Smith announced the hire Monday.

Along with patent matters, Kieff brings expertise in antitrust, trade secret and false advertising-related cases, “all areas in which we are seeing an increased demand for our services,” McKool managing partner David Sochia said in a written statement.

“Trade is a big topic of debate these days, here in the United States, but also in Europe and Korea and Japan,” Kieff said in an interview Tuesday. “Many of these trade disputes can be tackled using the tools of trade secrets, false advertising and antitrust, without having to use the much more politically charged tools of trade law.

“The politically charged stuff runs the risk of changing when the political winds change,” Kieff says. On the other hand, “few major economies really want a lot of false statements in their marketplace. It's hard to run a market that way. It's hard to run an economy that way.”

Kieff practiced at Pennie & Edmonds and Jenner & Block before an academic career that spanned Stanford's Hoover Institution and George Washington University. He's also served extensively as a mediator and an arbitrator.

Under Obama administration rules he can't appear personally before the ITC until June of next year. But he certainly intends to collaborate with the McKool trial lawyers who do. “I won't be the face or the signature,” he says.

Pass the Popcorn Please

The Illumina-Ariosa Diagnostics trial is officially under way in Judge Susan Illston's courtroom. My ALM colleague Ross Todd was in the courtroom as Weil, Gotshal & Mangespartner Edward Reines squared off against Irell & Manella's David Gindler.
Read more here.

Portfolios in Motion

This is cool. Perkins Coie teamed up with Elevate Services to develop a proprietary patent prosecution platform. (Say that fast three times.) My colleague Rhys Dipshan explains that the goal is to handle high volumes of rapidly moving portfolios without getting lost in data.
Read more here.

IP and All That Jazz

Whether it's the rock musician who was once the chief judge of the Federal Circuit or the jazz pianist who's now chairman of a New York IP boutique, there's something about IP law and music that go together.

In closing, I wish for all your notes to be on pitch and your legal issues appealable … unless, of course, you won at trial. See you all on Friday.