By Scott A. McKeown
| August 10, 2017

Post-Grant Patent Trials 2017 & More


For those seeking PTAB related CLE/education the fall, there are a number of great programs on the immediate horizon.

This September, the most widely attended PTAB CLE program returns, the Practicing Law Institute's USPTO Post-Grant Patent Trials 2017. (register here)

Sept. 25, 2017, New York, NY (webcast available)
Oct. 25th 2017, San Francisco, CA (webcast available)
I am pleased to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. This day-long CLE event will be offered in both New York and San Francisco (also webcast). New for this year, the New York program will include a segment entitled Northeast Corridor: Bio/Pharma at the PTAB. Also new this year, San Francisco will include a special 2-hour segment entitled: Patent Monetization in Silicon Valley: Licensing Blues & Navigating PTAB Roadblocks. These programs are always the highlight of the CLE year.  


Some additional events this fall with offer more academic/policy based insight to the PTAB and beyond.


Share

Read More

By Scott A. McKeown
| August 8, 2017

Article III Standing Only Necessary for Party Invoking Authority of Federal Courts


Last week, I analyzed the government's arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned whether the government had Article III standing to intervene in a case where the original appellee dropped out. As to the arguments presented by the government, I explained that I found the most compelling argument to be that the agency can piggyback off of the Article III standing of the appellant as the standing inquiry is properly directed at those who invoke the court's jurisdiction. 

Yesterday, two of the three judges (Newman, Clevenger) on the Knowles panel agreed with the above "piggyback" argument in Personal Audio, LLC v. Electronic Frontier Foundation.

Share

Read More

By Scott A. McKeown
| August 3, 2017

What Exactly is the "Thrust of the Rejection?"


Every so often a decision comes out of the USPTO's Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. For example, back in June, the Federal Circuit analyzed the degree of corroboration necessary for an In re Katz declaration.  Earlier this week, the Court reviewed an appeal from an inter partes reexamination in Honeywell Intl. Inc. v. Mexichem Amanco Holding S.A. de C.V. et al. to determine whether or not the Board's reliance on a reference different from those of the patent examiners underlying rejections constituted a "new rejection."  The Court's discussion, especially that found in the dissent, may help shed light on this somewhat amorphous standard. 

While a new rejection analysis may appear to be limited in relevance to patent prosecution and appeals before the PTAB, this same analysis can be helpful in navigating Administrative Procedure Act (APA) compliance in AIA trial proceedings.

Share

Read More

By Scott A. McKeown
| August 2, 2017

Assignor Estoppel Not an Exception to 311(a)


The Patent Trial & Appeal Board (PTAB) has designated the following decision as precedential: Athena Automation Ltd v. Husky Injection Molding System Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013), Section II.A. (here)

Athena holds that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows “a person who is not the owner of a patent” to file a petition for inter partes review. This decision was later left undisturbed by a split-panel of the Federal Circuit.  The majority found review of assignor estoppel precluded by operation of the appeal bar (35 U.S.C. § 314(d), relying upon the Court's earlier decision in Achates Reference Publishing.  Of course, the continued viability of Achates is being reconsidered, en banc, in in Wi-Fi One LLC v. Broadcom (here).  As such, this agency precedent might be revisited by the CAFC down the line.
Share
By Scott A. McKeown
| August 1, 2017

USPTO Explains Intervenor Standing


Some weeks back in Knowles Electronics v. Matal, the Federal Circuit, sua sponte, asked the following of the parties (order here):
When the prevailing party in an inter partes reexamination proceeding before the USPTO’s Patent Trial and Appeal Board (“Board”) declines to appear before this court to defend the decision below, is the USPTO’s Director required to possess Article III standing in order to intervene?

If yes, does the Director possess such standing in this appeal?

Additionally, if the Director does in fact possess standing; must the Director defend the Board’s decision? Alternatively, what are the ramifications if the Director declines to defend the Board’s decision?
The debate has obvious ramifications for appeals from PTAB trial proceedings. Whether intervening when a petitioner drops out/settles its dispute with a patentee, or intervening on appeals deemed to touch upon a significant practice issues, USPTO intervention is quite commonplace. Indeed, the only AIA trial dispute decided by the Supreme Court was a case in which the USPTO intervened at the appellate level, In re Cuozzo Speed Technologies.

Yesterday, the government explained the origin of its standing, as well as its propriety under Article III.
Share

Read More