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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Petitioner Over-Reaching at the PTAB Results in Adverse Summary Judgment

Posted On: Jul. 30, 2014   By: Scott A. McKeown
inherencyStretching Prior Art Grounds Fatal to Petitioners

In district court, 102 grounds are highly preferred to even the strongest 103 ground. This is because of the uphill battle in demonstrating invalidity in a forum that not only applies a presumption of patent validity, but also requires clear and convincing evidence of invalidity. Obviousness just does not resonate with non-technical fact finders as well as anticipation. For this reason, patent challengers in the district court will often creatively argue 102 grounds on the basis of “inherency.”

Now that patent validity disputes are increasingly heading to the Patent Trial & Appeal Board (PTAB), challengers find themselves in a difficult situation. That is, where a 102 ground has been “stretched” in the co-pending litigation, for consistency, the same position is being advanced at the PTAB. This practice has led to some unfortunate results for those allowing their district court case to drive their PTAB strategy. Read the rest of this entry »

Reminder: PTAB to Host Lunch Webinar Tomorrow

Posted On: Jul. 28, 2014   By: Scott A. McKeown
ptoBriefing to Review Federal Register Notice Concerns

The Patent Trial and Appeal Board (PTAB) is hosting a free lunchtime webinar tomorrow from noon to 1 pm(EST) to discuss AIA trial proceedings. At the webinar, Acting Vice Chief Judge Scott Boalick, who heads the Trial Section of the Board, will discuss non-rule recommendations received from stakeholders during the recent round tables.  Judge Boalick also will address the 17 questions that the Board posed in the Federal Register Request for Comments.  There will be time for questions and comments during the webinar.

PatentPostGrant.com July Webinar Tomorrow

Posted On: Jul. 22, 2014   By: Scott A. McKeown
post grant webinarFree Webinar Series – July

Just a reminder that this month’s edition of the PatentsPostGrant.com free webinar series will be held tomorrow, July 23rd @12:30 (est). The July webinar is entitled:

Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape. (Speakers are Scott McKeown, Dianna Devore Ph.D, and Chris Bullard).


The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 60 minutes. After the presentation there will be a 30 min Q&A period. To attend the webinar please sign up by clicking (here). 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.

We look forward to speaking with you during the webinar.

PTAB Institution Rate Dips Into 60% Range

Posted On: Jul. 22, 2014   By: Scott A. McKeown
Past Three Months of PTAB Statistics Tell A Different Story

PTAB statisticsLast week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage points in the past year. However, the averaging of 2012-14 proceedings does not tell the current story. Whether you agree with my explanation of this recent phenomena as a reflection of poor petition quality or not, there is clearly a heightened focus on the preliminary proceeding (i.e., petition stage).

What was left out of last week’s post was a snap shot of what is actually going on at the PTAB  today— the effective institution rate right now. Read the rest of this entry »

PTAB to Host Lunch Webinar on July 29th

Posted On: Jul. 18, 2014   By: Scott A. McKeown
uspto_logoBriefing to Review Federal Register Notice Concerns

The Patent Trial and Appeal Board (PTAB) is hosting a free lunchtime webinar on Tuesday, July 29th from noon to 1 pm(EST) to discuss the AIA trials. At the webinar, Acting Vice Chief Judge Scott Boalick, who heads the Trial Section of the Board, will discuss non-rule recommendations received from stakeholders during the recent round tables.  Judge Boalick also will address the 17 questions that the Board posed in the Federal Register Request for Comments.  There will be time for questions and comments during the webinar.

PTAB Dials Back Petitioner Success Rate

Posted On: Jul. 17, 2014   By: Scott A. McKeown
PTAB Grant Rate2014 PTAB Institution Rate Retreats to 70% Range

To date, a major patentee criticism of Inter Partes Review (IPR) & Covered Business Method (CBM) patent challenges has been their high rate of institution. Patentees were quick to point to the 85+% institution rate of the Patent Trial & Appeal Board (PTAB) as evincing an anti-patent bias. This dull roar was then amplified by then CAFC Chief Judge Rader labeling the PTAB a patent “death squad.” In response, the PTAB patiently explained the relatively small sample size of instituted proceedings, the fact that trial does not always go forward on all claims, and that there was a natural selection of weak patents in the early days of IPR and CBM. The PTAB suggested that in the months ahead, the institution rate would normalize. Yet, these reassurances fell on mostly deaf ears.

Now that a larger sample size is available (and soon to be growing by 100+ decision every month), the PTAB predictions are beginning to materialize. Read the rest of this entry »

PatentsPostGrant.com Webinar July

Posted On: Jul. 16, 2014   By: Scott A. McKeown
post grant webinar Free Webinar Series – July

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, July 23rd @12:30 (est). The July webinar is entitled:

Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape. (Speakers are Scott McKeown, Dianna Devore Ph.D, and Chris Bullard).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 60 minutes. After the presentation there will be a 30 min Q&A period. To attend the webinar please sign up by clicking (here). 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.

We look forward to speaking with you during the webinar.

(For those seeking PTAB strategy CLE this month, please join my colleague Todd Baker tomorrow on AIPLA’s webinar enitled PTAB: Tactics for Launching a Patent Attack and for Surviving One)

PTAB Finds BRI Claim Construction No Different Under Phillips

Posted On: Jul. 15, 2014   By: Scott A. McKeown
PTAB-BRIFavorite Criticism of PTAB Proceedings Falls Flat

The Patent Trial & Appeal Board (PTAB) is currently seeking feedback from the public on the first two years of administrative patent trials of the America Invents Act (AIA). The very first issue presented for consideration in the recent Federal Register Notice is the continued use of the broadest reasonable claim interpretation (BRI) in PTAB post-grant patent challenge proceedings.

Since the passage of the America Invents Act (AIA) some patentees have been advancing the notion that BRI should not be employed by the PTAB. Instead, they argue that BRI claim construction should be replaced with the claim construction practices of the district court (i.e., Phillips v. AWH). Critics insist that the new AIA proceedings are more “adjudicative in nature” as compared to examiner based patent prosecution/reexamination practices, and, that PTAB post-grant patent practices should be consistent with the courts. Of course, the true concern at the heart of this “consistency” argument is that the Board is arriving at an unduly broad construction compared to that of the courts. That is, critics of PTAB claim construction practices believe a Phillips analysis to be inherently narrower than BRI. (i.e., more patent validity/patentability friendly).

This belief is mainly driven by cases where a patent claim previously construed by a court, is later construed to have a broader scope by the PTAB. The fault in this logic is two-fold. First, it is assumed that a Phillips analysis necessarily dictates a narrower construction, and, second, that the district court constructions were not unduly narrow in the first instance. Read the rest of this entry »

CAFC Reverses EDTX on Second Guessing of PTAB

Posted On: Jul. 11, 2014   By: Scott A. McKeown
CBM-stayEDTX Denial of CBM Stay Deemed Abuse of Discretion

Back in March I recounted the curious case of VirtualAgility Inc., v. Salesforce.com Inc., et al. (EDTX). In this dispute, Salesforce.com sought a stay of the EDTX litigation pending Covered Business Method (CBM) review of the VirtualAgility patent. The CBM petition was filed with the USPTO Patent Trial & Appeal Board (PTAB) on May 24, 2013 as CBM2013-00024.

The EDTX determined that a stay was unlikely to simplify the issues for trial based upon an independent assessment of the CBM. This was despite the fact that the PTAB went forward with the CBM (i.e., determined that all of the claims were more likely than not unpatentable on multiple grounds), and the patentee had already amended their claims. Thereafter the case was effectively stayed anyway pending interlocutory appeal to the CAFC (a right newly provided by the CBM statute). Read the rest of this entry »

Patent Reissue Applications Moved Away From Examining Corps to CRU

Posted On: Jul. 9, 2014   By: Scott A. McKeown
Topics: Reissue
patent reissue applicationsCentral Reexamination Unit (CRU) Takes on Patent Reissue Workload

Yesterday, the USPTO issued an internal memo to the Examining Corps informing them that the Central Reexamination Unit (CRU) would be taking responsibility for patent reissue applications going forward. (Memo here) This move was first considered some years back under Director Kappos to remedy the excessive pendencies of patent reissue proceedings. However, that effort was shelved as a result of political headwinds (primarily examiner union complications).

Since that time, the workload of the CRU has lessened thanks to the elimination of inter partes patent reexamination, and to a lesser extent, the lack of interest in supplemental examination. Yet, patent reissue has remained a pendency quagmire due to examiners unfamiliarity and lack of consistent exposure to some of the quirky issues common in reissues (recapture, oaths, correctable defects, etc).

Moving these unique, but important post grant proceedings to a dedicated unit of examination specialists is LONG overdue — and welcome news for patentees.