By Scott A. McKeown
| November 26, 2014

Limitations of Patent Reissue

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a "do-over" of the original prosecution. For example, claim scope previously surrendered may not be "recaptured" via a broadening patent reissue. This same "public reliance" policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents applicants from obtaining by reissue, claims that because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Last week, the CAFC explained yet another limitation on patent reissue practice, the "original patent" limitation of patent reissue. 

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By Scott A. McKeown
| November 24, 2014

Representative Order Suggests Evolving Motion to Amend Practice

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment.

In response, the PTAB has gathered feedback from the interested public on motion to amend practice in a recent Federal Register Notice entitled: Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, which included the query:

What modifications, if any, should be made to the Board's practice regarding motions to amend?

While the USPTO has yet to issue a response to the recent feedback, it appears that the PTAB is poised to adopt the suggestion to move claims from the body of the motion, to an appendix.

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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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