Scott McKeown

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Director Considers Common Customer/Supplier Indemnification Scenarios

Earlier this year, the USPTO Director clarified that competitors of a multi-defendant suit do not necessarily share a “significant relationship” consistent with PTAB precedent to justify a discretionary denial of an otherwise meritorious IPR petition. Ford Motor Co. v. Neo Wireless LLC (IPR2023-00763). Late last week, the Director considered another common multi-party litigation scenario. This time the Director explored the degree of interest (i.e., degree of cooperation, contractual obligation, or common purpose) necessary to create an RPI or privity relationship such that a 315(b) bar of one such party applies to the other — specifically, in customer/supplier indemnification scenarios.

In Luminex International Co. Ltd v. Signify Holdings B.V., the Director considered whether an indemnification obligation, absent more, demonstrates an RPI relationship, or creates privity between a customer and supplier.Continue Reading PTAB: Customer/Supplier RPI & Privity?

Another Symbolic Gesture at Year End

This past Thursday the Senate Judiciary Committee voted to advance the so-called Promoting Respecting Economically Vital American Innovation Leadership Act (PREVAIL) to the Senate floor — barely, by a vote of 11-10. The Bill is now eligible for a formal vote, at least in theory. But given the limited legislative calendar left in 2024, coming change to the Senate majority/committee leadership, and the significant opposition to anything related to drug pricing from democratic lawmakers, the Committee vote is little more than a symbolic gesture to create the appearance of traction for 2025.

If this development sounds eerily familiar its because a similar political show was put on last year at this exact same time. Continue Reading Prevail Act Limps Out of Senate Judiciary Committee

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Federal Circuit to Reconsider In re Cellect Carve Out?

Back in August, the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. That decision distinguished In re Cellect as not generally deciding that a second later expiring patent can always serve as a proper OTDP reference. And more particularly that a first-filed, first issued, later-expiring claim cannot be invalidated by a later filed, later issued, earlier expiring claim (yes, its a mouthful).

Yesterday, that decision was petitioned for en banc review. Continue Reading Allergan OTDP Exception – Rehearing?

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Final Rules Expand Director Review Reach

The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.

Based on the comments, the final rule proposal has been…

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CAFC Distinguishes Cellect Based on First-in-Time Patent Term

Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here)

Allergan answers one question, but others remain. Continue Reading Allergan “First” Exception To Cellect OTDP Scenarios

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FWD Boilerplate Encourages Rework

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.

In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.

Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue. Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise

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Boardside Chat Thursday July 18th

Tomorrow, Thursday, July 18, from noon to PM (EST), the USPTO will offer another episode of its “Boardside Chat” webinar series. This month, the webinar will focus on motions practice in America Invents Act (AIA) proceedings before the PTAB. The presentation will include a discussion of various motions that are…

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Final Rule Package Expected in Fall

For those patent professionals living under a rock the past few months, the USPTO issued a notice of proposed rulemaking (NPRM) back in May that seeks to add a new stipulation requirement for terminal disclaimers filed to overcome non-statutory double patenting (here). Under the proposal, to overcome an obviousness-type double patenting rejection, the Applicant would need to stipulate that the entire patent subject to the terminal disclaimer will be enforceable only to the extent that the conflicting claims of the reference patent remain valid and enforceable. In other words, if conflicting claims of a reference patent fail, so too would all claims of the subject patent, including any patentably distinct claims.

The NPRM comment period closed yesterday and hundreds of public comments have been collected (here). Now what?Continue Reading Public Comment Period on Controversial Terminal Disclaimer Proposal Now Closed

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Public Notice & Transparency

Yesterday the PTAB announced an update to its Standard Operating Procedure (SOP 1). The update explains how judges are paneled, recused, and staffed on a given case. This latest revision aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures. In other words, this SOP is just…