IP Law Bulletin

In a case that has received significant attention over the past several months, a United States Patent Trial and Appeal Board (PTAB) panel recently concluded that the Saint Regis Mohawk Tribe’s claim of tribal immunity did not prevent the PTAB from reviewing patents held by the Tribe. As an alternative basis for proceeding with the review, the panel found that, despite the assignment to the Saint Regis Mohawk Tribe, the Tribe was not essential to the proceedings because the original patent owner, Allergan, effectively still owned the patents.

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC to decide whether the AIA (America Invents Act) patent review program for challenging the validity of issued patents is constitutional. Specifically, the Court will decide the question of “whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

To date, the Supreme Court has granted certiorari (commonly referred to as cert) to five patent-related cases this term, which will result in three oral arguments likely to be decided before the end of the term. Two of the cases were consolidated into a single argument, while another case was subject to a Grant-Vacate-and-Remand (GVR) order, meaning the previous decision by the United States Court of Appeals for the Federal Circuit (CAFC) has been vacated by the Supreme Court and the case must be reconsidered by the CAFC. There are also over 20 pending Petitions for Writ of Certiorari, which may result in additional patent matters being heard by the Court this term.

Recently, the Patent Trial and Appeal Board (“the Board”), issued an informative decision in Apotex Inc., v. Wyeth, LLC, IPR2015-00873 (“the ‘873 IPR”), providing insight into how the Board will apply estoppel under 35 U.S.C. §315(e)(1) and exercise its discretion under 35 U.S.C. §325(d). Previously, Apotex filed an IPR petition, IPR2014-00115 (“the ‘115 IPR”), against the same patent at issue in the ‘873 IPR, which resulted in the issuance of a Final Written Decision. In view of the Final Written Decision in the ‘115 IPR, the patent owner asserted that Apotex was estopped from “requesting inter partes review because the asserted grounds are based on prior art that the petitioner ‘was aware of, cited and relied upon [in the previous] ‘115 IPR.’” Finding that the preconditions for §315(e)(1) estoppel applied, the Board found that the petitioner was estopped from raising one of the two asserted grounds. No estoppel applied to the other ground, however, because the ground was merely raised, but not instituted on, in the earlier proceeding.