By Scott A. McKeown
| July 18, 2017

Failure to Argue Differing Claim Language of Similar Claims Haunts Appellant


PTAB practitioners must always be mindful of the Board's longstanding practice to treat grouped claims as standing or falling together. That is, claims should be argued separately where the claims are phrased similarly, but with some deliberate grammatical or additional term difference to distinguish scope.  In those cases, it is important to discuss the implications of the grammatical differences. Simply reciting a claim limitation, and asserting that the limitation is/is not found in the prior art, is not taken by the Board as a separate argument for patentability.

That said, such layered arguments may fall prey to the tight space constraints in AIA trial proceedings where more pressing arguments are necessary.  

For example, one of the more particularly tricky aspects of AIA trial practice prior to May of 2016— at least for petitioners— was fitting all of petitioners arguments within the fifteen pages allocated for a Petitioner Reply by the PTAB.  As a result of the limited real estate, some petitioner arguments that might have been otherwise made were often cut for space constraints. Fortunately, in May of 2016, the fifteen page limit was increased to twenty-five pages.

Yesterday's decision of the Federal Circuit emphasized the risks of claim grouping; perhaps a reflection of the earlier AIA trial briefing constraints.

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By Scott A. McKeown
| July 14, 2017

Judge Gilstrap Singled Out in Congressional Hearing as Defying SCOTUS


Yesterday, the House IP Subcommittee on the Courts, Intellectual Property and the Internet conducted a hearing entitled: The Impact of Bad Patents on American Businesses. During the hearing, Chairman Darrell Issa (R-Calif.) and House Judiciary Committee Chairman Bob Goodlatte (R-Va.) did not mince words expressing their displeasure with the EDTX's handling of the Supreme Court's recent decision in TC Heartland.

At the opening of the hearing, Chairman Issa explained that Judge Gilstrap's interpretation of TC Heartland "rejects the Supreme Court's unanimous decision" and is "an act I find reprehensible."  It only got worse from there.

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By Scott A. McKeown
| July 12, 2017

Patent Owner Sur-Replies on the Uptick


Back in June of 2016, the Federal Circuit issued its opinion in Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc.(here).  At the time I explained that Genzyme was a game-changer.  This was because it made clear that the trial portion of an AIA proceeding was an opportunity for both sides to build a record — not a mere analysis of the four corners of the trial petition.  As stated simply by the Court in Genzyme, "[t]he purpose of the trial in an inter partes review proceeding is to give the parties an opportunity to build a record by introducing evidence—not simply to weigh evidence of which the Board is already aware." (emphasis added)  

As a reminder, an instituted AIA trial (absent a motion to amend) includes a single brief from each party, the petitioner filing the last brief as the party bearing the burden of demonstrating unpatentability.  

Since Genzyme, the Board has become far more comfortable with petitioners citing to new exhibits in petitioner replies (assuming such exhibits/arguments are in support of existing positions as opposed to altogether new theories).  At roughly the same time Genzyme issued, and since, the Board has been faulted for violating the Administrative Procedure Act (APA). For example, for failing to give parties a fair opportunity to respond to issues. (e.g., SAS Institute Inc., v. ComplementSoft LLC)  These developments are helping drive a more liberal perspective at the Board as to additional briefing possibilities for Patent Owners.  

A review of trial practices immediately before Genzyme, as compared to today, illustrates an increased willingness on the part of the PTAB to permit Patent Owner sur-replies at the close of the trial, effectively giving Patent Owners the last word in trial briefing.
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By Scott A. McKeown
| June 23, 2017

Bill Would Effectively End PTAB


The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act was unveiled in the U.S. Senate this week.  This is the newest incarnation of a previously stalled bill known as the "STRONG Patent Act of 2015."  The new bill, like its predecessor, proposes significant modifications to the patentability trial mechanisms of America Invents Act (AIA).  These modifications, if adopted, would for all practical purposes end AIA trial proceedings at the Patent Trial & Appeal Board (PTAB) — the apparent goal of the organizations backing this legislative effort.  

Notably, this same agenda prevented the 2015 bill from gaining any real traction. While the new bill does include some improved proposals for amending claim at the PTAB, oddly, it also doubles-down on its anti-PTAB agenda.

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By Scott A. McKeown
| June 21, 2017

"Closely Tied" Language of Cuozzo & Institution-Centric Statutes


The en banc opinion on the scope of the AIA's appeal bar (35 U.S.C. §§ 324(e)/314(d)) remains outstanding in WiFi One.  Still, we have seen a few opinions from the Federal Circuit as of late that nibble around the edges of this issue.  From these decisions, we see the Court focusing on the statute underlying the appealed issue, and whether or not that statute is tied, in timing or substance, to the institution stage.  The most recent, Credit Acceptance Corp. v. Westlake Services, found another exception to the appeal bar for CBM estoppel. 35 U.S.C. 325(e)(1).
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