By Scott A. McKeown
| July 28, 2016

Anti-Competitive IPR Settlements for Orange Book Patents?


The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (CBM) upon request of the parties. As provided in 35 U.S.C. 317 (b), such settlement agreements must be in writing, and submitted to the agency before the proceeding can be terminated.  These submissions may be, at party request, maintained as business confidential— not surprisingly, almost all are submitted under seal.  The statute explains that the the confidential nature of these settlements will be generally maintained, but "shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause."

The rationale behind making these agreements available to government agencies in particular is to safeguard the public from ant-competitive practices. Some commentators have begun to question whether or not "reverse payment" settlements are being made to terminate PTAB trial proceedings involving Orange Book patents.

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By Scott A. McKeown
| July 26, 2016

July Webinar: Overlap Between Administrative Procedure Act (APA) & PTAB AIA Trial Practice


The July edition of the PatentsPostGrant.com free webinar series will be held tomorrow, Wednesday July 27th @12:30PM (est). The July webinar is entitled: The Tail That Wags the Dog: Leveraging the Administrative Procedure Act (APA) at the PTAB (speakers: Scott McKeown & Greg Gardella). This is the re-scheduling of the March webinar directed to the same APA issues. As the title suggests, the webinar will focus on the controlling APA procedure and standards as applied by the PTAB and CAFC. Register (HERE). (or copy the following link into your web browser: https://oblon.webex.com/oblon/onstage/g.php?MTID=efeaa9da53af3bddeb711a62ec6f25700

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you'll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.
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By Scott A. McKeown
| July 26, 2016

CAFC Clarifies Burden of Production in AIA Trial Proceedings


In patent examination, once a prima facie case of obviousness is presented in a rejection by the agency, the burden of production switches to the Applicant. In AIA trials, such as Inter Partes Review (IPR) there are no "rejections," instead, there are "grounds" of unpatentability. These grounds are first presented in a petition, and if satisfying the reasonable likelihood of prevailing standard, instituted for trial by the Patent Trial & Appeal Board (PTAB).  However, institution of a trial ground by the agency is not the same as establishing a prima facie case. 

As the Federal Circuit held yesterday in In re Magnum Oil Tools Int’l, Ltd. the burden of production does not shift to the patentee upon trial institution.
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By Scott A. McKeown
| July 21, 2016

Post-Grant Outcomes Pilot Identifies 600+ Patent Applications Related to Ongoing AIA Trial Proceedings

Back in February I discussed the USPTO's plans to launch a pilot program designed to enhance communication between patent examiners and the Patent Trial & Appeal Board (PTAB).  The USPTO explained the pilot as an attempt to create a bridge between the PTAB and patent examiners examining patent applications related to an ongoing AIA trial proceeding. That pilot, now known as the Post-Grant Outcomes Pilot is well underway.
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By Scott A. McKeown
| July 19, 2016

Special Boardside Chat Next Tuesday, Followed by PTAB/APA Webinar on Wednesday


Note: The Special Boardside Chat has been cancelled due to illness

The PTAB will host a special Boardside Chat on Tuesday, July 26th from noon to 1 p.m. ET featuring a conversation with new Chief Judge David Ruschke. You can access the program through Livestream (here). Chief Judge Ruschke will talk about his background, as well as his vision and priorities for the PTAB. You also will have the opportunity to ask him questions through the comment section of the program. (The next regularly scheduled Boardside Chat will be held on Tuesday August 2nd, and is entitled: Presentation of Prior Art in an AIA Trial).

On Wednesday, July 27th, the July edition of the PatentsPostGrant.com free webinar series will present: The Tail That Wags the Dog: Leveraging the Administrative Procedure Act (APA) at the PTAB (speakers: Scott McKeown & Greg Gardella). This is the re-scheduling of the March webinar directed to the same APA issues. As the title suggests, the webinar will focus on the controlling APA procedure and standards as applied by the PTAB and CAFC. Register (HERE). (or copy the following link into your web browser: https://oblon.webex.com/oblon/onstage/g.php?MTID=efeaa9da53af3bddeb711a62ec6f25700

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