On February 23, 2018, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office issued a decision denying the St. Regis Mohawk Tribe’s various motions to terminate several inter partes review proceedings based on the theory of tribal sovereign immunity. The consolidated case was Mylan Pharmaceuticals Inc., et al. v. Saint Regis …
Category: PTAB
Fed Circuit Watch: Pre-Institution Disclaimer Creates Estoppel for Patent Owner
On January 24, 2018, the Court of Appeals for the Federal Circuit ruled on Arthrex, Inc. v. Smith & Nephew, Inc.,[1] holding that the patent owner’s pre-IPR-institution statutory disclaimer resulting in an adverse judgment has the effect of estoppel against the patent owner. The facts are as follows. Smith & Nephew filed an IPR against …
McAward as Precedential and Lower Standard for Indefiniteness During Prosecution
Way back on August 25, 2017, the U.S. Patent and Trademark Office designated Ex parte McAward[1] as precedential authority for defining the USPTO and the PTAB’s policy on assessing indefiniteness as defined under 35 U.S.C. §112(b)[2] during prosecution. However, McAward does not so much define the USPTO’s rules on indefiniteness but rather reasserts its position …
Fed Circuit Watch: Time-Bar in IPR Institution Petition is Appealable
One January 8, 2018, the Court of Appeals of the Federal Circuit issued Wi-Fi One, LLC v. Broadcom Corp.,[1] in which the en banc panel held the PTAB decision to institute or not an inter partes review based on whether the petition was timely can be appealed through judicial review. Specifically, the issue was whether …
SCOTUS Watch: Musings on Oil States
As we await a decision from the U.S. Supreme Court on the constitutionality of IPRs before the PTAB at the USPTO, I reviewed two related points relevant to the underlying discussion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.[1] The first is the Oil States’ reliance upon McCormick Harvesting Machine Co. v. …
SCOTUS Watch: Oral Arguments in Oil States
On November 27, 2017, the U.S. Supreme Court heard oral arguments in the Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.[1] This case is discussed in a previous blog posting, but as a recap, the two parties in the litigation are both oil & gas companies, in which Oil States owned a patent …
SCOTUS Watch: Oil States Oral Hearing Preview
On November 27, 2017, the U.S. Supreme Court will hear oral arguments in the appeal from the Court of Appeals for the Federal Circuit, Oil States Energy Services v. Greene’s Energy Group.[1] Certiorari was granted earlier this year. The sole question presented is whether the inter partes reviews – adversarial proceedings held before the United States …
PTAB Releases Revision to Operating Procedures for Cases Remanded from Federal Circuit
On November 16, 2017, the Patent Trial and Appeal Board (PTAB) revised its Standard Operating Procedures 9 (SOP9) involving cases remanded for further review from the Federal Circuit. These standard operating procedures are administrative rules governing cases as they wind their way through the appeal or trial processes before the Board, and are designed to …
USPTO Designates Assignor Estoppel Case as Precedential Authority
On August 1, 2017, the USPTO designated a Patent Trial and Appeal Board case as precedential authority. This case was decided four years ago, on October 25, 2013. That case, Athena Automation Ltd. v. Husky Injection Molding System Ltd.[1], held that the doctrine of assignor estoppel is not an exception to inter partes review (IPR).[2] …
SCOTUS Watch: Cert Granted in Oil States: the Constitutionality of IPR Proceedings
By Brent T. Yonehara On June 12, 2017, the U.S. Supreme Court granted the petition for certiorari in Oil States Energy Services v. Greene’s Energy Group, LLC.[1] Of the three issues presented by petitioner Oil States, only one will be heard before the Supreme Court, namely: Whether inter partes review – an adversarial process used …