By Scott A. McKeown
| November 20, 2014

CAFC Again Finds Abuse of Discretion in Denying Stay Pending PTAB Review

Back in July, the CAFC considered an interlocutory appeal from a denial of a motion to stay pending Patent Trial & Appeal Board (PTAB) review in VirtualAgility Inc., v. Salesforce.com Inc., et al. (EDTX). In Virtual Agility, the Court reversed the EDTX's denial as an abuse of discretion since it seemingly held a "mini-trial" on the merits of the defendant's CBM petition. Today, in Versata Software Inc., et al. v. Callidus Software (here), the Court considered another interlocutory appeal (unique to the CBM statute) from a decision of Judge Sue L. Robinson of the U.S. District Court for the District of Delaware.  

As in Virtual Agility, the Court side-stepped the question of whether their review should be de novo under the CBM statute by finding the denial was an abuse of discretion. Yet, notably, the Court mentioned its authority to "conduct more searching review of decisions to stay pending CBM review."

In considering the facts of Versata, the CAFC once again found the district court's stay analysis wrong as to all of the enumerated factors of the CBM statute. 

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By Scott A. McKeown
| November 18, 2014
PTAB

November PatentsPostGrant.com Webinar to Focus on CBM Practice

This month's edition of the PatentsPostGrant.com free webinar series will be held this Wednesday, November 19th @12:30 (est). The November webinar is entitled:

Business Method Patent Challenges after CLS Bank & Ultramercial. (speakers: Michael Kiklis & Scott McKeown). The webinar will cover important tactical considerations for CBM filings, with a focus on the growing prominence of 101 challenges. Register (HERE).

The formal portion of the 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
| November 14, 2014

October Brings 195 AIA Patent Challenge Petitions to PTAB

Post-grant, patent challenge mechanisms of the America Invents Act (AIA) continue to surge in popularity. Inter Partes Review (IPR) and Covered Business Method (CBM) patent challenges have been pouring into the Patent Trial & Appeal Board (PTAB). Last month, the Board received an astounding 195 petitions, surpassing the previous high water mark of 190 set in June of this year.
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By Scott A. McKeown
| November 13, 2014
PTAB rehearing

Trial Section Outpaces PTAB Average

As discussed previously, the PTAB is experiencing a filing rate of 150+ AIA trial petitions per month (184 last month alone). This includes petitions for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method challenges (CBM). The Board's Trial Section could see between 1800- 2500 petitions this year alone —  if not more as PGR ramps up. Of those filings that reach a final written decision (60% or more) it  is expected that upward of 60+% of those will include a rehearing request of that decision from one side or both. That is, a significant amount of "re-work" on top of the growing AIA trial workload. Given the statutory deadline on the active docket items, which would not apply to rehearing requests of final written decisions (i.e., statutory clock stops at final written decision), these requests may see a much lower Board priority relative to the growing pile of time sensitive matters. In such a scenario, the overall pendency to a final CAFC resolution will be correspondingly extended.

The good news is that ...so far...the Trial Section is outpacing historical rehearing pendencies of ex parte prosecution and reexamination appeals.
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By Scott A. McKeown
| November 10, 2014
patentspostgrant.com

November Webinar to Focus on CBM Practice

This month's edition of the PatentsPostGrant.com free webinar series will be held on Wednesday November 19th @12:30 (est). The November webinar is entitled:

Business Method Patent Challenges after CLS Bank. (speakers: Michael Kiklis & Scott McKeown). The webinar will cover important tactical considerations for CBM filings, with a focus on the growing prominence of 101 challenges post-Alice. Register (HERE).

The formal portion of the 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.

This will be the last blog webinar for 2014 as we are skipping the holiday season, but please consider these additional, upcoming programs:
1. AIA Post-Issuance Proceedings and Their Impact on 337 ProceedingsProceedings30th Annual Meeting of the International Trade Commission Trial Lawyers Association, November 13th @ 1PM; U.S. International Trade Commission.
2. Evolving PTAB Trial Practices: Navigating Complex Procedural Rules -- Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend. December 15, 2014 Strafford Legal webinar. (register here)

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