By Scott A. McKeown
| December 16, 2014

New Guidelines Follow Alice & Ultramercial Decisions

Today the USPTO will publish their new subject matter eligibility guidelines (35 U.S.C. § 101). A copy from the advanced reading room is available (here). While directed to examination procedures, the guidelines will  also be applicable to Inter Partes Review (IPR) and Covered Business Method (CBM) Challenge Proceedings. These guidelines supersede the controversial guidelines that were issued in the wake of the Prometheus decision.


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By Scott A. McKeown
| December 15, 2014
PTAB Amendment

Multiple Factors Drive Downtrend in Amendments at PTAB

Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages from accused infringers. That is, if the amended or new claim is not substantially identical in scope relative to a previously issued claim, potential infringers of the amended/new claims are provided with an absolute and/or equitable intervening rights defense (35 U.S.C. § 252). For this reason, historically, patentees would rarely amend claims at the USPTO that were asserted in a co-pending litigation.

This calculus changed somewhat with the introduction of the post-grant trial proceedings of the America Invents Act (AIA).

Unlike, the previous patent challenge mechanism, patent reexamination, the new administrative patentability trials are faster — much faster. This increase in speed undermines the previous "war of attrition" model. Patentees can no longer shrug off a patent challenge at the USPTO on the basis that it will never finish in time to matter. Now, at the PTAB, the choice between amending or not is effectively a choice between losing the patent altogether and living to fight another day. Moreover, with the ability to file a contingent amendment (i.e., an amendment not considered unless the original claims are deemed unpatentable) there would appear to be even more reason to "hedge" one's bet.

For these reasons, amendment at the PTAB was sought in many of the earliest IPR filings. Since that time, however, patentees have reverted to old habits.

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By Scott A. McKeown
| December 9, 2014

Board Sanctions Patentee in IPR Proceedings

37 C.F.R. § 42.12 provides that the Patent Trial & Appeal Board (PTAB) the power to sanction parties. The Board  has been reluctant to officially sanction parties given the relative newness of the AIA trial proceedings. The power to sanction parties was only been even alluded to in a handful of cases — which is typically enough. To my knowledge, the Board had yet to officially sanction a party. And then last week, a Patentee came along and pretty much volunteered to be the first.

In SAP America v. Lakshmi Arunachalam (IPR2014-00413, 00414) the pro se patentee appears to have challenged the impartiality of one of the assigned Administrative Patent Judges (APJ) based upon their mutual fund holdings (presumably accessed by a FOIA filing -- all PTAB judges fill out a financial disclosure form every year). In doing so, the Patentee uploaded some documents to the Patent Review Processing System (PRPS) that were not only unauthorized, but were quite offensive. Similar statements were put on a web page, along with others accusing quite a few district court and CAFC judges of similar misdeeds.

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By Scott A. McKeown
| December 8, 2014

2014 CLE Year Comes to a Close

The PatentsPostGrant.com free monthly webinar series has concluded for 2014, but will resume in January 2015. Yet, there remains at least one option for those a few credits short of their 2014 continuing legal education (CLE) requirements. Next Monday, I will host the Strafford Legal webinar entitled: Evolving PTAB Trial Practices: Navigating Complex Procedural Rules -- Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend. (register here)

For those looking forward to January 2015, the National CLE Conference (CLE & SKI) will be held in Vail Colorado January 8-11th (register here). This program, now in its 32nd year, will cover a full spectrum of hot topics in IP law. The program features a dialogue between the bench and the bar that will include Judge Reyna of the Court of Appeals for the Federal Circuit. (CAFC)


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By Scott A. McKeown
| December 5, 2014
CAFC PTAB

Review of PTAB Trial Orders Debated by CAFC

In recent weeks, the CAFC has twice considered whether or not the trial orders of the USPTO's Patent Trial & Appeal Board (PTAB) become appealable once a final written decision is issued. First, on November 3, 2014, the CAFC heard arguments directed to this issue in In re Cuozzo Speed Technologies LLC. The Cuozzo appeal stemmed from the very first Inter Partes Review (IPR) ever filed. Cuozzo appealed the Board's determination of unpatentability and argued that the IPR never should have been instituted in the first place. This past Wednesday in an appeal stemming from  the very first CBM filed, Versata Development Group v. SAP America, Inc, a similar threshold argument was made to the Court.

Can the CAFC consider an otherwise nonappealable PTAB trial order in reviewing a final written decision?

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