By Scott A. McKeown
| February 24, 2015

Upcoming Post-Grant CLE

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

First up is this week's Utah IP Summit  (Friday, February 27th), topics include Surviving PTAB Review & Insulating Your Patent Portfolio

Next, 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, including Lessons learned:Tips and Strategies for Practicing Before the PTAB. Other segments include the participation of several current PTAB judges.
Register (here

Last, but certainly not least, 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. 

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By Scott A. McKeown
| February 23, 2015

Agency Discretion Dictated by Petitioner Joinder Rationale

As discussed previously, in Target Corp. v. Destination Maternity Corp (IPR2014-00508) a divided PTAB panel permitted issue joinder. While the dissent argued that acceptance of issue joinder might permit a proverbial "second bite at the apple," the majority countered that such gamesmanshp could be thwarted by judicious use of agency discretion.

As I have pointed out, petitioner's sometimes exclude claims from an IPR petition that are not asserted against them in an ongoing litigation. For example, a complaint is filed alleging infringement of claims 1-10, but not claims 11-15. After the 12 month IPR window has passed, and the IPR for claims 1-10 is timely filed, the patentee may then amend their complaint to add claims 11-15. In this way. when the motion to stay pending IPR is argued, the patentee emphasizes that claims 11-15 are not part of the IPR. That is, there is no reason to "stay" as trial will be necessary for claims 11-15 regardless of the IPR outcome. In such a case, issue joinder would seem warranted— as opposed to a case in which the petitioner fails as to claims 11-15, but files a second petition as a "do-over."

It seems the PTAB agrees, as demonstrated recently in Amneal Pharmaceuticals LLC. v. Endo Pharmaceuticals Inc. (IPR2014-01365, Paper 13, February 4, 2015).

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By Scott A. McKeown
| February 12, 2015

Issue Joinder within Statute, Matter of Agency Discretion 

At the outset of this year, I explained how Target Corp. v. Destination Maternity Corp (IPR2014-00508) was one of five Patent Trial & Appeal Board (PTAB) decisions that changed post-grant trial practice in 2014. Target was notable because it was a significant departure from previous PTAB practice. That is, up until Target, a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., "issue joinder). The Target decision found issue joinder outside of the statutory authority granted by 35 U.S.C. § 315(c). cf. Microsoft Corp. v. Proxyconn, Inc., (IPR2013-00109, Feb. 25, 2013)

In Target, as in Microsoft, the petitioner filed a second petition outside of their 12-month window to attack a claim that was excluded from the Trial Order of an earlier, timely filed petition (argued as being necessitated by the patentee's failure to provide requested materials in litigation discovery). Since joinder is a codified exception to the 12-month window, absent issue joinder, the claim could not be attacked with a second "stand-alone" petition. The Target majority denied issue joinder back on the basis that § 315(c) is directed solely to joinder of parties

A Request for Rehearing was filed in November of 2014 challenging the Target Decision. Today, the PTAB issued a second expanded panel decision reversing the 2014 decision.
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By Scott A. McKeown
| February 12, 2015

Hearing to Assess Developments in Supreme Court Case Law

On the heels of last week's re-introduction of the Goodlatte bill (now, recast as H.R. 9) At 1PM today, the House Judiciary Committee will hold a hearing, entitled Examining Recent Supreme Court Cases in the Patent Arena. A list of speakers is provided below along with a copy of their prepared testimony.

Witnesses

Mr. Herbert C. Wamsley
Executive Director
Intellectual Property Owners Association
Wamsley Testimony

Mr. Krish Gupta
Senior Vice President & Deputy General Counsel
EMC Corporation
Gupta Testimony

Mr. Andrew J. Pincus
Partner
Mayer Brown LLP
Pincus Testimony

Mr. Robert P. Taylor
Counsel
National Venture Capital Association
Taylor Testimony


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By Scott A. McKeown
| February 11, 2015

Court Sheds Light on "Reasonably Could Have Raised" IPR Estoppel

The petitioner estoppel provision of Inter Partes Review (IPR), 35 U.S.C. § 315(e)(2), precludes a petitioner from asserting invalidity in a subsequent litigation or ITC action "on any ground that the petitioner raised or reasonably could have raised during that inter partes review." Frequently, petitioners struggle with the metes and bounds of the language "reasonably could have raised." Does it encompass only patents and printed publication that could have been uncovered in a reasonably diligent search, as suggested by some? What about the use of product manuals — does use of a printed manual foreclose later use of the underlying product in litigation?

While we await case law clarification on the former query, the latter was recently addressed in Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) 

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