Missouri Senator Introduces Bill to Abrogate Native American Sovereignty for Inter Partes Review Petitions

S.1948 – A bill to abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents. Allergan, Inc. and The Saint Regis Mohawk Tribe v. Teva Pharmaceuticals USA, Inc., Mylan Pharmaceuticals, Inc., and Akorn, Inc., Case No. 2:15-cv-1455-WCB (E.D. Tex. Oct. 16, 2017). READ MORE

Consider Others’ Denied IPR Petitions Before Filing Your Own Follow-On Petition

Decision Denying Institution of Inter Partes Review, Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC, Case No. IPR2017-01305 (P.T.A.B. October 17, 2017).

Last month, we wrote about the Patent Trial and Appeal Board’s (“PTAB’s”) enumeration of seven non-exhaustive factors to be considered in determining whether to grant or deny a “follow-on” petition for inter partes review (“IPR”) after a previous petition attacking the same patent was denied.  In this case, the PTAB provided guidance where the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent”—is not explicitly satisfied, but the current petitioner is somehow connected to a previous petition. READ MORE

Look (at the PTAB Factors) Before You Leap Into Your Follow-On IPR Petition

Decision Denying Petitioner’s Requests For Rehearing, General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case Nos. IPR2016-01357, 01358, 01359, 01360, 01361 (P.T.A.B. September 6, 2017) (expanded panel)

Last year, the Patent Trial and Appeal Board (“PTAB”) set out seven factors that could be considered in determining whether to grant or deny a subsequent petition for inter partes review (“IPR”) after denial of a previous petition—a so-called “follow-on” petition. Moving forward, IPR participants should pay close attention to how the PTAB applies these factors and whether it adds more.

In September 2015, General Plastic filed two IPR petitions challenging claims in Canon patents. The PTAB denied institution on the merits in March 2016 and subsequently denied General Plastic’s requests for rehearing. Then, in July 2016, General Plastic filed five subsequent petitions, again challenging claims of the same Canon patents. Again, the PTAB denied those petitions.


USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE