Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what I'm looking at as a new era of patent eligibility potentially could be beckoning:

• Final thoughts on the Supreme Court's Section 101 cert petitions.

• Don't sleep on PTAB sovereign immunity.

• Two APJs bid adieu to the PTAB.

• Federal Circuit closing in on en banc call for PTAB appointments issue.

• If PTAB judges are unconstitutional, can they make a case exceptional?

As always, you can email me your feedback and follow me on Twitter.

Hogan Lovells partner Neal Katyal. (Photo: Diego Radzinschi/ALM)

Gaming Out the Section 101 Cert Petitions

It's T-minus three days for Section 101 at the Supreme Court. Six patent eligibility cases are on the court's Friday conference. Here are a few final thoughts going into those votes:

➤ The case most likely to be granted cert is Athena Diagnostics v. Mayo Collaborative Services. The solicitor general's office has recommended the court take this case, even though the Supreme Court was asking the SG's views on two other cases. "It's pretty rare for the solicitor general to say 'take this case' and they don't take the case," said Berkeley solo Andrew Dhuey, who's asking the court to grant and hold his 101 case, Reese v. Sprint Nextel, if the court goes with Athena. Wilmer Cutler Pickering Hale and Dorr partner Seth Waxman is counsel of record for Athena. Fish & Richardson partner Jonathan Singer is counsel of record for Mayo.

Unified Patents Chief IP counsel Jonathan Stroud thinks "there's a very good chance" the court will take Athena, given the pressure from the solicitor general and from amici such as BIO and PhRMA. I'll add that you also have all 12 active Federal Circuit judges saying that at least some diagnostics methods ought to be patent eligible.

➤ If the court does think it's time to revisit eligibility, will it take Athena only? Lawyers for HP and for Garmin, Fitbit, Nike and other tech and retail companies are demanding the court reconsider a Federal Circuit rule that makes it harder to resolve Section 101 challenges on the pleadings.

The companies point out that bio-pharma is just a small slice of Section 101 litigation. "Petitioners—who represent a broad cross-section of industry—have to live with this unanswered question every day," writes Hogan Lovells partner Neal Katyal in Garmin v. Cellspin Soft, one of the six cases on Friday's conference list.

Garmin has flown under the radar of the higher-profile HP v. Berkheimer, but it presents the same issue: whether eligibility is a question of law or fact. Garmin has the kind of history that the Supreme Court has feasted on over the last 10 years. U.S. District Judge Yvonne Gonzalez Rogers thought the claims were so weak that she declared the case exceptional and awarded fees, only to have the Federal Circuit reverse, citing its new Berkheimer rule.

Garmin wasn't the subject of a CVSG, but Katyal nevertheless took the liberty of responding to the SG's brief in Berkheimer. Like HP, he points out that the SG didn't defend the correctness of Berkheimer, but instead said that it should deal with the substantive law of Section 101 before turning to the procedural. John Edmonds of Edmonds & Schlather represents Cellspin Soft. He argues that the Garmin petitioners waived their challenge to the Berkheimer rule in district court.

Berkheimer and Garmin remind me a little of Google v. Oracle, in that SG recommended against granting the cert but kind of halfheartedly.

➤ One other very possible outcome Friday is that nothing happens. Given the number of cases, the complexity of the issues, and the solicitor general saying "don't take these, but take this," it wouldn't be at all surprising if the court takes another week or two and relists them for subsequent conferences. That would still make them potential candidates for argument later this term, Supreme Court observers say. But the closer we get to February, the greater the possibility the court could push arguments to next fall.

➤ Of course, the court could always deny certiorari in all six. If that happens, says Ropes & Gray partner Matt Rizzolo, it would send a pretty clear message: "We're done with this for now, and this is something Congress needs to deal with."

PTAB Is Sovereign Immunity on the Table Too

Sleeper alert! Along with the six eligibility decisions, the PTAB sovereign immunity case Regents of the University of Minnesota v. LSI is also on the Jan. 10 conference. In LSI the Federal Circuit held that states cannot invoke their sovereign immunity when their patents come under attack at the PTAB.

The University of Minnesota has added Goldstein & Russell partner Kevin Russell as counsel of record to the university's Wolf, Greenfield & Sacks team. He argues that IPRs are adversarial, adjudicatory proceedings similar to civil litigation, meaning that immunity should apply. Thirteen state universities and an association that spans some 240 additional institutions of higher education are backing Minnesota.

Kilpatrick, Townsend & Stockton partner Kristopher Reed is counsel of record for respondent LSI and Avago Technologies. Orrick, Herrington & Sutcliffe partner Mark Davies represents respondent Ericsson. Bartlit Beck partner Adam Mortara represents respondent Gilead Sciences. They argue, among other things, that in an IPR the federal government is merely taking a second look at a patent and canceling those that shouldn't have issued in the first place. That doesn't implicate state sovereign immunity, they argue.

Morrison & Foerster partner Alex Yap (courtesy photo)

Two APJs Bid Adieu to the PTAB

I reported Monday that Alex Yap is leaving the Patent Trial and Appeal Board to return to Morrison & Foerster. Yap said he couldn't pass up the opportunity to rejoin old friends and MoFo's deep IP bench.

It turns out Yap isn't the only APJ to leave the board in recent weeks. PTAB Judge Jacqueline Harlow has indicated on LinkedIn that she departed in November and is now pursuing work in "IP strategy." She declined via email to be more specific about her plans.

Based on her resume, Harlow seems like someone who could write her own ticket. Before joining the board in 2015 she was litigation counsel to Apple for three years. She is a former Weil Gotshal & Manges associate who clerked for then-Federal Circuit Chief Judge Randall Rader; has a masters in neuroscience from The Johns Hopkins University; and was editor-in-chief of the Harvard Journal of Law and Technology.

Among Harlow's claims to fame at the PTAB: she and Judge Jennifer Bisk wrote separately in the state sovereign immunity IPRs to stake out the position that was ultimately adopted by the Federal Circuit. The PTAB majority, led by then-Chief Judge David Ruschke, concluded that states do have sovereign immunity at the PTAB, but waive it when they sue for patent infringement in district court.

Tensegrity Law's Matt Powers

Shooting for the Moon on PTAB Appointments

One last bit of PTAB news: We're nearing a decision on whether the Federal Circuit will decide to review en banc the constitutionality of the APJs' appointments.

The parties and the government filed their petitions last month in Arthrex v. Smith & Nephew and the Federal Circuit on Friday invited responses by January 17.

Then on Monday, the parties in Polaris Innovations v. Kingston Technologies—which the government says should be the lead case on PTAB appointments—filed supplemental briefing at the Polaris panel's request. With all of that briefing in hand, the court should be ready soon to decide whether to go en banc.

Polaris is taking an aggressive approach. Tensegrity Law Group's Matt Powers, joined now by Lowenstein & Weatherwax, argues not only that the PTAB judges are unconstitutionally appointed, but that the Federal Circuit's approach of fixing the problem by removing their civil service protections is futile.

"There is no severance that can cure the constitutional defect with the appointment of the Administrative Patent Judges (APJs)," Powers writes in Monday's brief. "This Court must declare the APJ system unconstitutional, dismiss this case, and leave Congress to craft a remedy."

Powers argues that the only cure is a Senate-confirmed PTAB, or granting the PTO director or other principal officer "meaningful and substantive review" of APJ decisions. He quotes House Judiciary Chairman Jerrold Nadler and IP subcommittee chairman Hank Johnson's criticisms of the Federal Circuit's approach from a November congressional hearing. "Speaking for myself, I find it inconsistent with the idea of creating an adjudicatory body to have judges who have no job security," Johnson had said at the hearing.

The government argues that PTO Director Andrei Iancu wields sufficient control over the assignment and management of PTAB panels that the APJs are rendered inferior officers, appropriately appointed by the Secretary of Commerce. If the court disagrees, then the Federal Circuit's approach of severing the APJs' civil service protections would do the trick, but the court should require rehearings only for the small handful of litigants who raised the appointments issue directly with the board, the government says. Applying it to the hundreds of cases pending appeal would impose unnecessary expense on the government and private parties, states the government's brief, which is signed by Dennis Fan of the Civil Division's appellate staff.

Interestingly, the government turned away an olive branch extended by Judges Timothy Dyk and Pauline Newman. They wrote in a separate case, Bedgear v. Fredman Bros. Furniture, that the severance of civil service protections could apply retroactively, necessitating no new hearings at all. Not so, says Fan. "With respect to Appointments Clause challenges properly preserved before the Board and raised in this Court, those challengers would be entitled to a remand to have their administrative controversies determined by properly supervised inferior officers," he writes.

Playing the Arthrex Card in Fee Litigation

Generally, some humility is in order when a losing patentee faces attorney fee motions under Section 285. The patentee's stance often reduces to, "OK, the judge (or the jury) has spoken. We hear that we lost. But we sincerely and reasonably believed in our case."

RideApp, the company that's been suing Lyft and Uber for allegedly infringing its patent on a ride-sharing platform, is taking a different approach. The company founded by a retired Georgia Tech professor and represented by Kasowitz Benson Torres is slamming the notion that it should have dropped its case once the Patent Trial and Appeal Board found its patents claims indefinite.

The PTAB's opinion is "pure dicta," RideApp states in a Jan. 3 opposition to Lyft's request for $569,000. The idea that RideApp "must accept PTAB dicta or face a fee award deprives RideApp of its constitutional right to due process."

And then there's this: "The PTAB comprises administrative judges that were not appointed constitutionally," states the opposition, which is signed by Kasowitz partner Jeffrey Toney. "The constitutionality of the PTAB has long been in question and, at the time the Lyft IPR was pending, was the subject of multiple attacks in the courts."

All of that is true. By statute the PTAB is not authorized to rule on indefiniteness in an IPR (which is why the board declined to institute proceedings). The PTAB decision was unappealable, leaving district court as the only avenue for a full and fair hearing. And as of last fall, when RideApp was litigating claim construction, the PTAB judges were indeed unconstitutionally appointed (though as of today, they're legit).

The problem is that U.S. District Judge Jon Tigar found the claims indefinite too. He found that RideApp's patent "contains no algorithm whatsoever," that RideApp took different claim construction positions at the PTAB and in his court, and that its conduct was "not conducive to the orderly progress of this case."

So this one could go either way. But it will be another interesting test of the single claim construction standard in the PTAB and the federal courts, and the ways in which it might now come back to bite.

That's all from Skilled in the Art today. I'll see you all again on Friday.