By Scott A. McKeown
| March 27, 2015

Page Limit Changes Effective Immediately for All AIA Trial Filings


The USPTO's Patent Trial & Appeal Board (PTAB) has announced some of their "quick fix" rule changes today in advance of the anticipated Federal Register Notice.  In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through typical notice & comment rule making later this year.  The immediate changes are directed to page limits, including:

Page Limits
-Motions to Amend are now limited to 25 pages (formerly 15 pages), and the claims may be attached as an appendix.
-Petitioner Reply Briefs are now limited to 25 pages (formerly 15 pages)

Later this year, more significant changes will be proposed, but are unlikely to be finalized until 2016, including:

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By Scott A. McKeown
| March 18, 2015

Should Systemic Changes to The Patent System Be Undertaken in Response to Bad Actors?

Efforts to enact patent reform (as well as the America Invents Act of 2011) are/were largely driven by the perception that the patent system is being abused by bad actors. Currently, many of the most established technology companies in the world are routinely sued for patent infringement by small/medium sized patent holders. The larger, established targets of these lawsuits consider these smallish companies "patent trolls." They insist that the current legal system is enabling trolls to inflict legal expense as a form of extortion in exchange for license payments. On the other side of the equation is the small/medium sized patent holders that claim the present system is necessary to ensure a fair shake for all innovators, regardless of size or business. And, that the present system has existed for decades to the benefit of big business. 

That is, pure licensing entities characterize the debate as being about who they are instead of their conduct. In that sense it reminds me a lot about of the debate that raged in the wake of the O.J. Simpson trial. 

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By Scott A. McKeown
| March 11, 2015

Senate Hearing To Spawn Even More Competing Bills?

Next Wednesday, March 18 the Senate Judiciary Committee will hold a hearing entitled The Impact of Abusive Patent Litigation Practices on the American Economy. An agenda is not yet available, however, I would expect that this discussion will be in stark contrast to many of the concepts proposed in last week's STRONG Act.

Upcoming CLE

As to other upcoming events of note, tomorrow kick's off the The 10th Annual Advanced Patent Law Institute at the U.S. Patent and Trademark Office's main campus in Alexandria Virginia (March 12-13th). This program provides a comprehensive view of USPTO practice, including application prosecution issues. Multiple segments are specifically directed to PTAB practice, including Lessons learned:Tips and Strategies for Practicing Before the PTAB. Other segments include the participation of several current PTAB judges.
Register (here

The most widely attended post-grant program of the year returns March 26th, Practicing Law Institute's USPTO Post-Grant Patent Trials 2015. I am happy to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. These full-day post-grant CLE programs are always the highlights of the CLE year.  (Register here)
Mar. 26, 2015 New York, NY
Apr. 17, 2015 San Francisco, CA (webcast available)

Hope to see you at one of these March programs.
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By Scott A. McKeown
| March 6, 2015

Patentees: Be Careful What You Wish For...You Just Might Get It

Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees and bar associations have been shortsightedly advancing the notion that BRI should not be employed in the patent challenge proceedings of the AIA (Inter Partes Review (IPR) and Post Grant Review (PGR)). Instead, they urge that BRI claim construction be replaced with the claim construction practices of the district court (i.e., Philips v. AWH). This is because, they argue, the new AIA proceedings are more "adjudicative in nature" as compared to past patent reexamination practices...and amendment isn't really possible.

Yet, if Philips were adopted by the PTAB, patentees would see little in terms of benefit. In fact, such a change would likely make matters far worse for patentees. 
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By Scott A. McKeown
| March 4, 2015

Misguided STRONG Act Would Undo Years of AIA Progress

Well, if you expected the Goodlatte Bill to sail through the House for swift passage through the Senate, forget about it. Hill chatter has indicated that the significant House support of the Bill has diminished since the last vote in 2013 (and rightfully so given the events of the past year). Perhaps of greater threat to the patent reform effort , however, is yesterday's introduction of the "STRONG Act" on the Senate side (here), which makes clear that further patent reform is far from guaranteed for 2015. 

The STRONG Act, or "Support Technology and Research for Our Nation’s Growth Patents Act of 2015" removes the controversial fee shifting provision of the Goodlatte Bill (a key point of contention in past battles). More importantly, the Senate Bill adds a multitude of proposed changes to AIA trial proceedings that will have patent abusers dancing in the streets —the Bill is more aptly titled the "Support Trolls & Reverse Our Nation's Progress under the AIA Act of 2015." 

While this legislative grenade may not have much chance ever seeing the light of day, it is surprising that such misguided proposals would be seriously offered in the first instance.

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