By Scott A. McKeown
| July 23, 2015

Upcoming Program To Include Live IPR Oral Hearing

Over the next few weeks, the PTAB in cooperation with the AIPLA and others, will be conducting several "road shows." These programs will discuss the forthcoming PTAB rule package (assuming it issues in time) and will include an overview of AIA trial proceedings.  Of particular note, at least for the Santa Clara stop, there will be an actual hearing conducted for an existing IPR dispute (Biotechnology arts). 

Santa Clara, CA
August 24, 2015
University of Santa Clara Law School

(co-sponsored by the High Tech Law Institute of Santa Clara Law)

Dallas, TX
August 26, 2015
    The Belo Mansion

 (co-sponsored by the IP Section of the Dallas Bar Association) ​                   

Alexandria, VA
August 28, 2015
USPTO, Madison Auditorium​

By Scott A. McKeown
| July 21, 2015

PTAB Announces New Informative Decisions

The Patent Trial and Appeal Board (PTAB) has designated the recent decision granting a request for additional discovery in Arris Group, Inc. v. C-Cation Techs., LLC, IPR2015-00635 (Paper 10) (PTAB May 1, 2015) as an informative decision. The decision grants Patent Owner's Motion for Additional Discovery on issues of privity pre-institution. The decision provides guidance on the types of reasonable and narrowly tailored requests for additional discovery concerning privity and real party-in-interest issues that the Board frequently grants. The decision can be found (here).

(Decision itself does not provide much feedback on narrowly tailored requests. Instead, it highlights the importance of uncovering potential "smoking guns" through external efforts before seeking discovery at the PTAB).

As to CBM estoppel, a new decision is provided to clarify the application of estoppel under 35 USC 325(e)(1) in Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper 28) (PTAB May 14, 2015). In this decision, the Board held that estoppel is applied on a claim-by-claim basis. "By its terms, estoppel is invoked under Section 325(e)(1) as to 'a claim in a patent' that 'results in a final written decision under' 35 USC 328(a)." The decision declines to terminate the present CBM patent review, because the Final Written Decision in a prior CBM patent review in fact only ruled upon the patentability of claims not at issue in the present CBM patent review. In the prior CBM, the Board declined to institute review of the claims before the Board in the present CBM patent review. Because these claims did not result in a Final Written Decision under Section 328(a), the panel held that estoppel under Section 325(e)(1) does not apply to those claims. The decision can be found (here).

(This decision has a unique set of circumstances. As alluded to in this decision, petitioners seeking to re-challenge claims missed in a first institution are typically denied under 325(d). For that reason, this decision is mostly academic). 

By Scott A. McKeown
| July 20, 2015

Duty of Candor Controls "Prior Art Known to Patent Owner"
UPDATE: This decision is now designated as "Informative" (here)

Last week, an expanded panel of the Patent Trial & Appeal Board (PTAB) clarified the required showings necessary to a successful motion to amend. Of note, the expanded panel included Deputy Chief Nathan Kelly as well as Vice Chief Scott Boalick. In the decision, Masterimage 3D. Inc. v. RealD Inc. (IPR2015-00040) (here), the Board clarified the meaning of the Idle Free phrase: "prior art of record and also prior art known to the patent owner."

As outlined in Idle Free Systems v. Bergstrom Inc., (IPR2012-00027), amendment during an AIA trial proceeding is by motion. As such, the burden is on the movant to demonstrate entitlement to the patentability of amended claims. One aspect of Idle Free that movants have struggled to digest is the metes and bounds of "prior art known to Patent Owner." In MasterImage, the Board clarified that the "prior art known to Patent Owner" is linked to the art that would trigger the Patent Owner's Duty of Candor.

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By Scott A. McKeown
| July 15, 2015

Patent Reform Effort Expected

An update to today's cheat sheet.
Given the burgeoning opposition to the "Innovation Act" (H.R. 9), the current bill was pulled from floor consideration this morning.  Back to the drawing board.

As to at least the PTAB changes, the focus can now appropriately turn to the imminent rule package of the agency.

USPTO, you are on now on deck.

By Scott A. McKeown
| July 15, 2015

PTAB Proposals on House Side

Last week, I summarized the PTAB modifications proposed in the Senate's Patent Act" (S.1137).  While there is an expectation that at least the House will try to bring "Innovation Act" (H.R. 9). to the floor for a vote, meaningful progress seems unlikely. Opposition to the bills has ramped up in recent days from conservative groups, and proponents of competing bills.  Coupled with the looming five week summer recess, it is inevitable that  Congress will kick the proverbial can down the road.

As pointed out previously, a rule package from the USPTO is expected in the July-August time frame that could moot many of these issues.  With that in mind, a delay in legislative action would be prudent.

That said, here are the current proposals of H.R. 9 that are directed at PTAB practice.


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