Mark D. Selwyn

Selwyn is co-chair of WilmerHale’s IP litigation practice, where his specialties include defending against assertions of so-called standard essential patents in the U.S. and globally.

His prominent clients include Apple Inc., Broadcom Corp., Cisco Systems Inc., Intel Corp., Ancestry.com LLC and others.

In a rare and closely-watched move, in 2020 Selwyn sued Andrei Iancu, the now-former director of the U.S. Patent and Trademark Office, in a challenge to the director’s discretionary authority in inter partes review proceedings before the Patent Trial and Appeal Board.

In that matter, his clients are Apple, Cisco and Intel; other plaintiffs include Google LLC and Edwards Life Sciences Corp. Apple Inc. v. Iancu, 20-CV06128 (N.D. Cal., filed Aug. 31, 2020).

Isn’t it unusual for a patent lawyer to sue the patent office? Selwyn pointed out it’s not the only case on his docket to list government agencies as defendants.

“We’re also suing the Department of Labor and the Department of Agriculture,” he said, pointing to pro bono wage cases on behalf of farm workers. United Farm Workers v. U.S. Department of Labor, 20-CV01690 (E.D. Cal., filed Nov. 30, 2020); United Farm Workers v. U.S. Department of Agriculture, 20-CV01452 (E.D. Cal., filed Oct. 13, 2020).

“All this litigation is based on the Administrative Procedures Act, using a range of different avenues to challenge different government activities,” Selwyn said.

Even so, the patent office suit stands out in the intellectual property world because it is an effort to abolish the NHK-Fintiv rule, established by Iancu, that lets the PTAB decline to review a patent based on the progress of a parallel infringement case in a federal court or other agency.

“The agency’s application of that rule has dramatically reduced the availability of [inter partes review], regardless of the weakness of the patent claims being challenged, thereby undermining IPR’s central role in protecting a strong patent system,” Selwyn wrote in his complaint.

The rule violates the Administrative Procedure Act, is arbitrary and capricious and defeats the purpose of IPR, “which is to provide a streamlined and specialized mechanism for clearing away invalid patents that never should have been issued, and to do so without the substantial costs, burdens, and delays of litigation,” Selwyn added.

U.S. District Judge Edward J. Davila of San Jose heard Selwyn argue in March in favor of summary judgment for the plaintiffs and against a motion by would-be intervenors to join the dispute.

The matter is pending; Selwyn declined to predict the outcome.

A long list of high-powered friends of the court have joined the plaintiffs, including Verizon Communications Inc., T-Mobile, Comcast Corp., Twitter Inc., the Alliance for Automotive Innovation and others.

“The case is about a rule used by the director to deny otherwise meritorious IPRs, and it’s used often enough that the companies we represent thought it worthwhile to challenge,” Selwyn said.

— John Roemer