By Scott A. McKeown
| January 28, 2015

Bi-monthly Program Will Address AIA Trials & Ex Parte Appeals

Starting next week, February 3rd, the USPTO's Patent Trial & Appeal Board (PTAB) will host its inaugural "Boardside Chat" lunch webinar. The purpose of the chats is to update the public on current Board activities and statistics as well as to regularly gather feedback. The schedule of topics through October is listed below.





Tuesday, February 3

Noon to 1 pm Eastern Time

PTAB Statistics and Key Decisions

Chief Judge James Donald Smith

Tuesday, April 7

Do’s and Don’ts for Ex Parte Appeals

Panel of Administrative Patent Judges

Tuesday, June 2

Discovery in AIA Trials

Panel of Practitioners and Administrative Patent Judges

Tuesday, August 4

AIA Rulemaking and Guidance Changes

Lead Judge Susan Mitchell

Tuesday, October 6

Best Practices before the PTAB

Panel of Administrative Patent Judges

Note the February, June and August topics are dedicated to trial practice, the April program to ex parte appeals. As discussed previously, some notice and comment rule making on AIA trial procedures is expected in the spring, hence the August topic. The "quick-fix" changes expected this month appear to be delayed a few weeks due to typical complications pertaining to the Federal Register publishing.

The Boardside Chat series will be a valued source of information for both the PTAB and interested public and should not be missed. The Instructions for next week's webinar are provided below.

Webcast Instructions for Tuesday, February 3:

Event address for attendees:
Event number: 313 818 218
Event password: 123456
Dial In: 1-571-270-7000
Captions Link:

By Scott A. McKeown
| January 27, 2015

Proponents of Further Reform Beginning to Scramble 

This time last year, further patent reform efforts had steamrolled their way through the House. While the House passed the Goodlatte Bill with surprising urgency, efforts on the Senate side became hopelessly deadlocked last spring on a variety of contentious issues. Since that time, a significant amount of change has come to the world of patent law thanks to a number of significant Supreme Court rulings. At the same time, the administrative patentability trials of the 2011 America Invents Act (AIA) continue to wreak havoc on the business model of patent assertion entities. 

So, it is no surprise that further patent reform has lost some of its 2013 mojo on Capitol Hill.

Read More

By Scott A. McKeown
| January 21, 2015

PTAB Claim Constructions Often Limited to Intrinsic Record

Yesterday, in Teva Pharmaceuticals USA, Inc., et al v. Sandoz, Inc. et al., (here) the U.S. Supreme Court reversed decades of CAFC precedent permitting de novo review of district court patent claim constructions. More specifically, the high court explained that when reviewing a district court's resolution of subsidiary factual matters made in the course of its construction of a patent claim, the CAFC must apply a "clear error," not a de novo, standard of review. This decision will also impact the CAFC's previous practice of applying de novo review of Patent Trial & Appeal Board (PTAB) claim construction decisions....or will it?


Read More

By Scott A. McKeown
| January 16, 2015

Early 2015 CLE Programs

The free monthly webinar series will resume in a few weeks. For more comprehensive CLE programs, there are a number of marquee programs on the horizon.

First up is the The 10th Annual Advanced Patent Law Institute at the U.S. Patent and Trademark Office's main campus in Alexandria Virginia, March 12-13th. This program provides a comprehensive view of USPTO practice, including application prosecution issues. Multiple segments are specifically directed to PTAB practice and include the participation of several current PTAB judges.
Register (here

Second, is the most widely attended post-grant program of the year, Practicing Law Institute's USPTO Post-Grant Patent Trials 2015. I am happy to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. These programs are always the highlights of the CLE year.  (Register here)
Mar. 26, 2015 New York, NY
Apr. 17, 2015 San Francisco, CA (webcast available)

Hope to see you at one of these upcoming programs. 

By Scott A. McKeown
| January 15, 2015

Spooking Financial Markets Via IPR

Over a year ago, I explained how "PTAB Trolls" were attempting to manipulate the new administrative trial system of the Patent Trial & Appeal Board (PTAB). PTAB Trolls attempt to extract settlements from patentees involved in high value litigation disputes. A PTAB troll operates as follows: (1) Identify a patentee that has been awarded a large damage verdict (not yet satisfied); (2) collect the prior art used in the litigation; (3) apply the same art in an Inter Partes Review (IPR) (with lower burdens of proof); (4) hope to leverage those burdens, and speed of the PTAB into forcing a settlement from the patentee. 

Other versions of this practice include PTAB Trolls that will take a "short" position in a penny stock having a market value closely tied to a patent litigation verdict. In such cases the mere filing of an IPR can spook investors, impacting trading volumes enough to cause a temporary, but significant, price drop (i.e., quick profit for a short seller). To date, these efforts have mostly failed, but not all. (See Patience Haggin's informative article on PTAB Trolls here)

Next up, well financed hedge funds taking on key drug patents of the pharmaceutical industry?


Read More