By Scott A. McKeown
| April 20, 2017

Upcoming CLE, Director Change & New Rules


The chatter around the USPTO's Alexandria campus is the ongoing efforts of the Secretary of Commerce, Wilbur Ross, to select a new USPTO Director. With interviews progressing, some of the bigger names have seemingly fallen out of the picture.  The focus appears to have shifted to attorneys in private practice. Current favorites include a patent litigation partner in DC, the other a patent prosecution focused partner from the West Coast.
Stay tuned.

As noted previously, the PTAB is soliciting comments from the public on possible AIA trial refinements. Comments are specifically welcomed addressing procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. In concert, the agency is also seeking input on outdated rules it might eliminate to satisfy the 2-for-1 requirements of the Trump administration. It seems that once the AIA feedback is collected, and some rules are identified for cancellation, the PTAB will be in a position to move toward a rule package - or issue the long-awaited updating of the PTAB Trial Practice Guide.

For those seeking some PTAB related discussion/CLE in the months ahead, there are a few noteworthy programs.

May 10th-11th: American Conference Institute presents its Third Annual Post-Grant PTO Proceedings in New York City (here). This two-day event will cover a variety of AIA Trial Proceeding topics. The second day will include a three-hour workshop entitled Parallel Proceedings: The Good, The Bad, and The Ugly. 

May 16, 2017: MIP PTAB Forum 2017 will be held in New York City. (here)  This is a full-day forum on PTAB trial practices.

I hope to see you at one of these upcoming events.

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By Scott A. McKeown
| April 17, 2017

CAFC Emphasizes that Art of Denied Petition Grounds Can Come Back to Haunt Patentees


It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis.  That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board's (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown for a given patent claim.

In the case of partial PTAB trial institutions, Patentees will often employ a strategy to formally object to the aspects of the preliminary record that include reference to prior art of the denied grounds.  The thinking here is that the objection will preserve the right to exclude this seemingly irrelevant art from the record at the close of trial. 37 C.F.R. § 42.64. Yet, art of a denied petition ground can be (and usually is) highly relevant at trial.

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By Scott A. McKeown
| April 11, 2017

Technical Findings of PTAB Increasingly Leveraged in Parallel Court Proceedings


Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid in resolving a number of disputed issues — from claim construction to summary judgement invalidity determinations.

More recently, the International Trade Commission (ITC) has followed suit.
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By Scott A. McKeown
| April 10, 2017

Symposium to Assess Trade Secrets


In tomorrow's Federal Register, the USPTO is announcing a public symposium on issues relevant to the protection of trade secrets, and to assess recent developments such as the Defend Trade Secrets Act (DTSA). The symposium will be held on May 8, 2017, from 9 a.m. to 4 p.m. EDT.

Under U.S. law, trade secrets comprise commercially valuable information not generally known or readily ascertainable to the public, that are subject to reasonable measures to maintain confidentiality. In May 2016, the Defend Trade Secrets Act of 2016 (DTSA) established a federal private civil cause of action for the misappropriation of a trade secret, with the aim to provide businesses with a uniform, reliable and
predictable way to protect their valuable trade secrets anywhere in the country. Given this legislation and the continuing domestic and international attention to trade secrets, the USPTO symposium will discuss: (1) Measuring the Value of Secrecy; (2) Use of the DTSA in Practice; (3) Differences in Trade Secret Protection in Foreign Jurisdictions; and (4) Considerations of Business Owners in International Cases. Experts from academia, private legal practice, international organizations, and industry will serve as panelists.
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By Scott A. McKeown
| April 7, 2017

PTAB Procedural Reform Initiative


Today the USPTO announced its PTAB Procedural Reform Inititative. The initiative seeks feedback on the nearly five years of historical data and user experiences to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review (IPR) proceedings. The purpose of the initiative is to ensure that the proceedings are as effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of the patentability of patent claims after they issue.
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