In a recent decision, Judge Schroeder of the Eastern District of Texas rejected the argument that decisions of the United State Patent and Trade Office (USPTO) invalidating patents held infringed by a jury means that a defendant cannot be held liable for willful infringement where appellate review of the invalidity decisions is still ongoing.
On October 6, 2017, the Patent Trial and Appeal Board (the “Board”) granted institution of inter partes review under 35 U.S.C. § 103(a) of claims directed to an online game. Notably, institution was granted despite the Board reserving determination on the patent owner’s argument that the petition should be denied under 35 U.S.C. § 315(b) as time-barred.
A Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of a claim directed to a method for treating low grade B-cell non-Hodgkin’s lymphoma. The challenged method required patients to be treated with cyclophosphamide, vincristine, and prednisone (CVP) chemotherapy, followed by four once-weekly doses of 375 mg/m2rituximab, an anti-CD20 antibody, every six months for two years.
On September 9, 2017, an Eastern District of Texas magistrate judge issued a report and recommendation holding that a plaintiff was estopped from asserting its patent infringement claims because statements made in response to an inter partes review (IPR) petition constituted a disclaimer.
In Broad-Ocean Technologies, Inc. v. Regal Beloit America, Inc., No. IPR2017-00802 (PTAB Aug. 22, 2017), Broad-Ocean sought to institute an inter partes review (IPR) of a patent owned by Regal Beloit (the “’476 patent”). Broad-Ocean and Regal are competing manufacturers of electric motors and power generation products. Regal had previously sued Broad-Ocean in the Eastern District of Missouri for infringing the ’476 patent, which covers a “Snap-Fit  Housing Assembly and Seal Method” for a combustion furnace blower.
In Oil-Dri Corporates of America v. Nestle Purina Petcare Company, the court recently held that a defendant who has filed a parallel inter partes review (IPR) petition is estopped from raising invalidity grounds in the district court that were not, but reasonably could have been, raised in the defendant’s IPR petition. Oil-Dri, 1-15-cv-01067 (ILND August 2, 2017, Order). In this case, Purina raised several invalidity arguments in district court, some of which were not raised in Purina’s IPR petition. Id. at 5.
The Patent Trial and Appeal Board designated as precedential its October 25, 2013, decision to institute inter partes review and declined to apply the doctrine of assignor estoppel as an exception to 35 U.S.C.§311(a). Section 311(a) provides that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.”
On July 6, 2017, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Ford Motor Company’s (“Petitioner”) request for rehearing of the Board’s decision denying institution of multiple inter partes reviews (IPR) based on its finding that, under 35 U.S.C. § 315(b), the petitions were filed more than one year after the date on which the Petitioner was served with a complaint alleging patent infringement.