Trends And Predictions For Serial Biologic Drug IPR Petitions

Two decisions over the past year could have significant implications in how serial inter partes review petitions are handled by the Patent Trial and Appeal Board going forward. The first, General Plastic Industrial Co. v. Canon Kabushiki Kaisha,[1] which laid out a seven-factor test to determine whether the PTAB will use its discretion not to review serial IPR petitions, was recently designated “precedential” by the PTAB. The second, the U.S. Supreme Court’s April 24, 2018, decision in SAS Institute Inc. v. Iancu,[2] where the court held that the PTAB must determine the patentability of all challenged claims in a petition and can no longer issue final written decisions on only a partial list of challenged claims, could also have implications for how serial petitions are considered by the PTAB going forward. This article reviews how serial IPRs on patents covering biologic drugs could be affected by these decisions, based on trends over the last few years.