Apple, Mylan lose US SC bids to challenge patent review rule

The internal rule, adopted in 2020 under former PTO director Andrei Iancu, gives judges at the agency's Patent Trial and Appeal Board greater discretion to reject challenges to the validity of specific patents.

These challenges, known as inter partes review (IPR) proceedings, are popular with technology companies and others that are often targeted with infringement suits, but less so with inventors and pharmaceutical companies that rely on patent protection to prevent generic competition.

The rule allows PTAB judges to deny review petitions based on several factors, including if related court litigation is closer to trial.

Apple and Viatris Inc-owned generic drugmaker Mylan argued in their Supreme Court petitions that the rule undermines IPR's role in improving the integrity of the U.S. patent system. They said plaintiffs alleging patent infringement can misuse the rule by suing in fast-moving federal courts in East and West Texas to avoid board review. Intel Corp and Roku Inc filed briefs supporting the petitions.

The cases arose from the board's denial of Apple and Mylan's petitions to review patents belonging to Optis Cellular Technology LLC and Janssen Pharmaceutica NV, respectively.

The United States argued on behalf of the PTO that board decisions on whether to institute review can't be challenged in court.

The Supreme Court rejected Apple and Mylan's requests without explaining its reasoning.

The high court's refusal to hear the cases follows rulings against the companies by the U.S. Court of Appeals for the Federal Circuit, which said it lacked jurisdiction.

Apple and other big tech companies also filed a separate lawsuit over the PTO rule in California federal court, which was dismissed in November.

The PTO declined to comment. The parties and their attorneys didn't immediately respond to a request for comment.

The cases are Apple Inc v. Optis Cellular Technology LLC, U.S. Supreme Court, No. 21-118; Mylan Laboratories Ltd v. Janssen Pharmaceutica NV, U.S. Supreme Court, No. 21-202.