By Scott A. McKeown
| September 30, 2016

PTAB Boot Camp & More


For those seeking some PTAB related discussion/CLE in the weeks ahead, there are a number of upcoming programs.

First up, next Friday October 7th, the George Washington University Law School will host an IPR-CBM Roundtable Discussion (here) from 12-6PM in the Faculty Conference Center; Fifth Floor, Burns Building Washington, DC 20052. (CLE is not offered for this program)

On October 18-20th the PTAB Bench & Bar Conference will be held at the Center for American & International Law in Plano Texas.  This program offers an afternoon "Bootcamp" with PTAB judges and practitioners on the 18th.  On the 19th the program focuses on “Advanced Practice before the PTAB.”  This second full day offering provides deep dive sessions for those who manage PTAB proceedings, practice before the PTAB, and are looking for a unique program and learning experience that focuses on current issues and best practices. On the afternoon of the 19th through to the 20th the program brings in the perspectives of several Texas and Delaware District Court Judges, as well as Judge Chen of the Federal Circuit and USPTO Director Michelle Lee.

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

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By Scott A. McKeown
| September 29, 2016

315(e) Estoppel as an Affirmative Defense


As most are aware, completed AIA trial proceedings have estoppel consequences for failed petitioners.  For example, an unsuccessful Inter Partes Review (IPR) petitioner of a given patent claim, real party in interest, or privy of the petitioner, is estopped from asserting that the same claim is invalid in a civil or ITC action on any ground that the petitioner raised or reasonably could have raised during the failed IPR. (35 U.S.C. § 315 (e)(2)). The same estoppel applies to requesting or maintaining a proceeding before the USPTO with respect to such a claim (35 U.S.C. § 315(e)(2)).  As can be appreciated from this statutory framework, whether before the courts or the Patent Trial & Appeal Board (PTAB), Congress was clearly interested in preventing patent challengers from getting the proverbial second bite at the apple.

Occasionally, however, a petitioner will uncover new prior art that could not have reasonably have been raised in the earlier PTAB proceeding  Petitioners seeking to overcome the affirmative defense of statutory estoppel may find that the courts are far more receptive in this regard than the PTAB.
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By Scott A. McKeown
| September 20, 2016

Leveraging PTAB Trial Records in the District Court


Tomorrow, is the September edition of the PatentsPostGrant.com free webinar series (September 21st@12:30PM (est)). The webinar is entitled: Leveraging PTAB Trial Records in Concurrent Litigation (speakers: Scott McKeown & Greg Gardella).  As the title suggests, the webinar will focus on utilizing PTAB fact finding and decisions in case dispositive pleadings, Markman and more. Register (HERE). (or copy the following link into your web browser: to https://oblon.webex.com/oblon/onstage/g.php?MTID=e0f385735ab0c84ab7bd0b15e722d42a3

The formal portion of the PatentsPostGrant.com webinar will begin at 12:30 Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. 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.

 

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By Scott A. McKeown
| September 16, 2016

30 Years Since the Formation of the Last National IP Bar Association


What better day to launch the new Patent Trial & Appeal Board (PTAB) Bar Association than on the 5th year anniversary of the enactment of the America Invents Act (AIA). I am honored to have been involved with the creation of the only bar association solely dedicated to practice before the PTAB, and to serve on its inaugural Board of Directors. The organization will help establish best practices for this unique forum, foster communication among stakeholders and the PTAB, and aid practitioners in staying abreast of rule making, procedure and PTAB jurisprudential evolution.

The Inaugural Annual Conference of the PTAB Bar Association will take place March 1 & 2, 2017 at the Ritz-Carlton in Washington, D.C. To become a member of the PTAB Bar Association, and for more details on its events and functions, and how to become involved, please visit www.PTABBar.org.  Follow us on Twitter @PTABBar
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By Scott A. McKeown
| September 15, 2016

Four Years of PTAB Trials

I've read quite a few AIA retrospectives over the last week in the run up to Friday's AIA anniversary. Almost all pose the rhetorical question: "who could have predicted the PTAB would become so impactful?" Well, for starters anyone up to their armpits in NPE lawsuits with the only available USPTO solution being patent reexamination, that's who.  Prior to the AIA the pent up rage/demand for a more effective USPTO post-grant challenge solution was palpable. For that reason, back in July of 2012, I thought that PTAB trials might break the NPE business model, especially for smaller NPEs.  

In 2016, NPEs still exist.  But, there are far fewer small fish.  Even large patent aggregators yearn for the go-go days before the AIA.  It is clear that the AIA trials ended the golden era of seven figure, cost of defense settlements.  Congress did it—it actually provided a workable USPTO post-grant solution that is cost effective, and fast enough to make a difference.  The PTAB levels the playing field.  No longer are businesses helpless to settle cases of dubious merit because of the lopsided discovery costs of an NPE suit, or risks of outlandish jury verdicts.  

That said, four years into AIA trials the PTAB is not without its critics.   

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