By Scott A. McKeown
| April 23, 2015

PTAB Scheduling Orders Begin Suggesting ADR Statements

The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties. This discretionary power to terminate a patentability challenge by agreement (37 C.F.R. § 42.74) is a fairly new concept for patentability challenges. Historically reexamination proceedings could not be terminated by agreement. In reexaminations (inter partes) where the contesting parties settled their dispute, the challenging party would simply drop out of the inter partes reexamination, but the Office would continue with the reexamination in the interests of public policy.  (cfterminating an inter partes patent reexamination by operation of estoppel).

Since accepting AIA trial petitions, the PTAB has encouraged settlements in many instances. Typically, panels inquire as to settlement possibilities during teleconferences with the parties. More recently, the PTAB is encouraging settlement by assigning a date on the Scheduling Order for an explicit ADR statement from the parties.

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By Scott A. McKeown
| April 15, 2015

April Webinar to Focus on Emerging Trends at The PTAB


It's been a long time, been a long time,
Been a long lonely, lonely, lonely, lonely, lonely time. Yes it has.

Back from the dead....this month's edition of the PatentsPostGrant.com free webinar series will be held on Wednesday April 29th @12:30 (est). The April webinar is entitled: Trends, Changes & Evolving PTAB Practices (speakers: Scott McKeown & Greg Gardella). As the title suggests, the webinar will cover important developments, rule changes and trends at the PTAB, as well as anticipated rule changes and legislative initiatives. 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
| April 13, 2015

House Judiciary Committee to Hear Testimony from USPTO & Industry Reps

Tomorrow, the House Judiciary Committee will conduct a hearing on the "Innovation Act" (H.R. 9).  Scheduled speakers include USPTO Director Lee, general counsel for BIO, and other in-house counsel. As most know, the Innovation Act is a re-presentation of the "Goodlatte Draft" that shot through the House in the waning days of 2013 only to die a slow death on the Senate side in 2014. Given last month's introduction of a competing bill on the Senate side, and more bills promised from both houses, tomorrow will kick off a long and painful grind. Passage of anything substantial in 2015 is simply not happening. The last year of the Obama administration in 2016 will almost certainly present further political impediments.   

Of particular note among the in-house counsel is the Senior VP of intellectual property of Salesforce.com. Salesforce.com has had particular success employing the Covered Business Method (CBM) review option of the America Invents Act (AIA).  All too often speakers are drawn from an industry or organization that has completely ignored the AIA, but yet asks for new laws —strange concept.

Judging by the lineup, it is highly likely that the topic of the PTAB's use of BRI will come up, usefulness of CBM (one would hope), as well as the recent hedge fund abuses. Should make for an interesting hearing.

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By Scott A. McKeown
| April 10, 2015
Petition Dismissal is Appropriate for Improper Use of PTAB Resources
(This post ran yesterday on IPWatchdog.com for those that may have missed it.)

I first discussed the potential abuse of PTAB post-grant patent trial proceedings back in 2013.  Since that time, attempts by profiteers to leverage the PTAB for improper purposes have failed. The most recent incarnation of this strategy is being advanced in the name of Hayman Capital, a hedge fund. As detailed Wednesday by IPWatchdog.com, a recent Wall Street Journal article outlined the true purpose of these filings is to influence stock prices of smaller bio/pharma patent holders to the negative (via PTAB IPR filings) while simultaneously investing in their close competitors. The Journal also explains that members of the fund invest a minimum of $1million each, with Hayman Capital earning a 20% return.  The Journal notes that those behind the filings have also created an organization referred to as the "Coalition for Affordable Drugs," but strongly implies this entity exists only for optics.

With the negative publicity surrounding these filings, and, if true, their reported abusive purposes, can the PTAB shut them down?
Yes, and I expect that they will.
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By Scott A. McKeown
| April 8, 2015

B&B Hardware Emphasizes Risks of Patentee Legislative Initiatives


A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, slip op., 575 U.S. __ (2015). In B&B, the Court held that a decision of the Trademark Trial and Appeal Board (TTAB) can have preclusive effect in subsequent district court proceedings (if the requirements of issue preclusion are otherwise met). That is, the Court determined that the action of an administrative agency can preclude later litigation of the "same issue" in a district court.

At present, the claim construction analysis employed by the Patent Trial & Appeal Board (PTAB), broadest reasonable interpretation (BRI), is considered different than the Philips construction employed by the district courts. For this reason, a claim construction ruling of the agency is not binding in a subsequent litigation pursuant to B&B. Yet, patentees urge that the use of what they consider to be an unfairly broad read of their claims (BRI) at the PTAB leads to improper cancellation of their patents. As I have pointed out previously this is a misguided belief. Different interpretations of a same patent claim term can be found, yet, in my view a proper determination is rarely different under either standard. Nevertheless, to cure this perceived inequity, patentees have consistently urged the PTAB to adopt the Philips analysis of the district courts for AIA trial proceedings. 

Yet as B&B makes clear, if the exact analysis used by the district court (i.e., Philips) is adopted by the PTAB, patentees may be stuck with it. This would put patentees in a far worse position than present. 

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