I was trying to figure out if the phrasing of the questions during the recent Supreme Court oral argument of Minerva v. Hologic signaled any outcome in the US v. Arthrex case. For example, would the justices refer to the role of the PTAB judges in eliminating bad patents? Would there be references to IPR’s or post-grant review? The transcript shows that there were not that many references to the PTAB. And, when there were, it was by the advocates — not by the justices. Justice Gorsuch, however, did reference IPR’s. For example, he stated: “And now we have the Patent Office itself refusing to apply patent estoppel in its own proceedings, for — in IPR proceedings. So the only place left that this doctrine seems to apply is in court.” Later he stated: “Unless they get challenged in the Patent Office in the IPR, which they could be. And then —.” At the end of the day, I don’t think the oral argument in Minerva suggests how the Court is deciding Arthrex one way or the other.
I did think one of Chief Justice Robert’s questions was intriguing:
CHIEF JUSTICE ROBERTS: Thank you, Mr. Hochman. I want to focus a little bit on your — your policy argument that getting rid of assignor estoppel would help, you know, get rid — rid of bad patents in encouraging inventors to — to challenge particular claims. But I thought strong patents was the way we encourage invention and that assignor estoppel helped ensure the strength and stability of — of those patents. How do you sort out those competing policy arguments?