By Scott A. McKeown
| September 16, 2014
non-analogous art

Setting the Level of Skill May be Critical in Niche Arts

The obviousness of a claimed invention is assessed from the perspective of a hypothetical person of ordinary skill in the art (POSITA). For this reason, the degree of skill present in a given art is often contested by parties to a patent litigation. Often times, patent challengers assert a higher level of skill, which favors an obviousness determination. Conversely, patentees advance a lesser level of skill, militating in favor of patent validity. Yet, outside of highly specialized fields, such disputes are of rare consequence in the predictable arts.

The USPTO's Patent Trial & Appeal Board (PTAB) rarely pronounces a precise level of skill, instead relying on In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by references of record). Given this, patent challengers in the predictable art rarely give much thought to advancing a precise level of skill in their post-grant challenges.

As made clear last week by the Court of Appeals for the Federal Circuit (CAFC), setting the level of skill could be especially important for art subject to a non-analogous art attack.
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By Scott A. McKeown
| September 15, 2014

USPTO Extends RFC Comment Period to October 16, 2014.

In an email announcement today, the USPTO extended the comment period for Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board from September 16th (tomorrow) to October 16th. The USPTO published a request for comments in the Federal Register on June 27, 2014, seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide.

As the summer vacation season complicated the ability of many stakeholders to respond to the complex issues of the RFC in time, the extension is a welcomed relief.
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By Scott A. McKeown
| September 11, 2014
PTAB

PTAB Claim Analysis Can Serve as Persuasive Authority

Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically, key terms at issue in the proceeding are expressly construed by the panel of administrative patent judges (APJs). While such constructions are not binding on a parallel litigation proceeding due to the use of a different claim construction rubric by the USPTO, in some circumstances such findings can be devastating to a litigation campaign — well in advance of the typical Markman Order.
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By Scott A. McKeown
| September 10, 2014

Upcoming CLE for Fall 2014 & Beyond

This month's edition of the PatentsPostGrant.com free webinar series will be held on September 24th @12:30PM (EST). The September webinar is entitled: Privies, Real-Parties-in-Interest & Joint Defense Scenarios at the PTAB.(Speakers are Scott McKeown & Michael Kiklis). (register here) VA CLE is provided.

For those seeking more of a strategic overview of PTAB practices and their overlap with litigation proceedings, consider another free webinar on September 23rd @ 11AM (EST). This webinar is entitled PTAB Past, Present, and Future: Post Grant Proceedings at the PTO. (Speakers are Scott McKeown & Gene Quinn of IPWatchdog.com) (register here)

For those seeking day-long CLE programs on post-grant patent practice, the following programs are upcoming for 2015.

National CLE Conference in Vail Colorado on January 7-11th (PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences 1/10/14) (register here)

Practicing Law Institute's USPTO Post-Grant Patent Trials 2015 (register here)
Mar. 26, 2015 New York, NY
Apr. 17, 2015 San Francisco, CA (webcast available)

I hope to speak with you at one of these upcoming programs.
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By Scott A. McKeown
| September 9, 2014

PTAB Speed Increases Likelihood of Amendment 

Prior to passage of the America Invents Act (AIA), patent reexamination was the only option available for patent challengers at the USPTO. But, patent reexamination lasted for years through appeal, especially inter partes patent reexaminations. For this reason, outside of those few patent disputes where the co-pending litigation was stayed, the reexamination became just another battle of attrition. As litigation costs mounted accused infringers were forced to settle independent of reexamination progress.

For non-practicing entities (NPEs) losing the patent at the end of a 5-7 year reexamination battle was less of a concern after extracting business value from the patent. So, even where the reexamination produced compelling evidence of unpatentability, amendment of originally issued claims was relatively uncommon. This is because amending original claims created obvious intervening rights problems, and might increase the chance of a litigation stay. NPEs preferred losing slowly to a claim amendment that would prevent monetization over several years of reexamination processing and appeals. 

The AIA not only broke the attrition model at the USPTO with its speed, but is forcing amendments of original claims at a much higher rate than in patent reexamination. There has been a significant focus on amendment practice before the PTAB. as such motions have rarely succeeded. For this reason, the PTAB is seeking feedback on motion to amend practice, the Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board asks:

2. What modifications, if any, should be made to the Board's practice regarding motions to amend?
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