The National Law Journal has named partners Gregory A. Castanias, David B. Cochran, and John A. Marlott as 2019 Intellectual Property Trailblazers. Through the various Trailblazers special supplements, the NLJ recognizes 25 lawyers that are "moving the needle" in their respective practice areas, showing deep passion and perseverance, and achieving significant success along the way.
The trio of Jones Day partners persuaded the Supreme Court to profoundly transform the way inter partes reviews (IPR) and other post-grant patent challenges are litigated before the USPTO’s Patent Trial & Appeal Board, reversing Federal Circuit precedent and overcoming longstanding USPTO practice. SAS v. Iancu, 138 S. Ct. 1348 (2018).
In order to obtain review, the Jones Day team framed the case to present fundamental issues about Chevron deference and the relationship between Congress and Executive-branch agencies (like the USPTO). The SAS petition highlighted a recent 10th Circuit decision criticizing Chevron, authored by then-Judge Gorsuch. The very day SAS’s petition was filed, Gorsuch was nominated to the Supreme Court. Shortly after his confirmation, the Court granted SAS’s petition.
The Court’s eventual 5-4 decision—authored by Justice Gorsuch—“shook up patent litigation” (NLJ), holding that the governing statute prohibited the PTAB from picking and choosing which patent claims to review and decide. Instead, the PTAB must issue a final decision on every patent claim a petitioner challenges. The impact was swift and immediate. Just days after the decision, the USPTO issued written guidance substantially revamping its IPR procedures, requiring institution and the final patentability decision to be on all claims and arguments presented.
Castanias, Marlott, and Cochran, who worked as a cross-office, cross-practice Jones Day team—represented SAS in all aspects of this case—district court, PTAB, Federal Circuit, and finally—and victoriously—the U.S. Supreme Court.
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