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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Senate Compromise Details

Posted On: Apr. 18, 2014   By: Scott A. McKeown
USA-COURT/SOTOMAYORSenate Compromise Outlined

While still at least a week away from the official Manager’s Amendment on the The Patent Transparency & Improvement Act, a document has been circulating purporting to outline the compromise between Senators  Schumer (D-NY)and Cornyn (R-TX). (here). Most of the changes are directed to fee shifting and patent litigation pleading and discovery controls.

PTAB Roundtable Webcast Today

Posted On: Apr. 15, 2014   By: Scott A. McKeown
USPTO_LogoWebcast today, 1-4PM EST

As a reminder, the Patent Trial & Appeal Board (PTAB) roundtable series kicks off today in Alexandria.

The Chief Judge will kick off today’s program with some performance information, including entirely new statistical categories of data. Thereafter, judges of the PTAB will conduct mock telephone conferences, and I along with three other practitioners will close out the program discussing strategy, practice tips and concurrent proceeding concerns.

Alexandria, VA Webcast – April 15, 2014

PTAB Roadshow Effort Kicks Off in Alexandria on 4/15

Posted On: Apr. 10, 2014   By: Scott A. McKeown

PTAB roundtableRoundtable Discussions to Spur Dialogue on Possible Rule Changes

Roughly eighteen months have passed since the USPTO’s implementation of the new post grant patent challenges of the America Invents Act (AIA). Since the rules for implementing these post grant patent proceedings were developed under an aggressive time schedule, as promised, the USPTO is now revisiting those rules. In the months ahead, the USPTO will be considering whether revisions/refinements to the Patent Trial & Appeal Board’s (PTAB) rules are in order. To kickoff the effort, the PTAB will be conducting informational/roundtable discussions around the country. Once the roadshows are concluded, the USPTO is planning a Federal Register Notice this summer to collect additional stakeholder comments.

The roadshow agenda includes a discussion of AIA trial statistics, lessons learned, and techniques for successful motions practice.  The roundtables are free and open to all with seating available on a first-come, first-served basis. Stops include, Alexandria (webcast available), New York, Chicago, Detroit, Santa Clara, Seattle, Dallas, and Denver.

Schedule and agenda are posted below. Read the rest of this entry »

Senator Leahy Announces Compromise on Patent Reform Bill

Posted On: Apr. 9, 2014   By: Scott A. McKeown
patentreformCompromise Reached, Manager’s Amendment Promised Post-Recess

With many fearing that the Senate Judiciary Committee had lost their way on S.1720 known as The Patent Transparency & Improvement Act, news comes today that after weeks of partisan wrangling compromise has finally been reached. Senator Leahy posted the following statement on his webpage minutes ago:

For weeks, members of the Judiciary Committee have been engaged in extensive bipartisan negotiations on legislation to address abuses in the patent system.  We have made enormous progress, and we now have a broad bipartisan agreement in principle.  This is a complex issue and we need additional time to draft the important provisions that have been the subject of discussion.

I have talked to many Senators on both sides, and because I want to be sure everyone is comfortable with how these pieces fit together, I will circulate a manager’s package the day we return from recess, and the Judiciary Committee will consider that legislation the first week we are back.

Senate Struggles to Recalibrate Patent Reform Bill

Posted On: Apr. 8, 2014   By: Scott A. McKeown
Patent reform stalemateStalemate Along Ideological Lines

The Senate Judiciary Committee continues to struggle with S.1720 (Patent Transparency & Improvements Act of 2013). Yet again, the Committee has postponed mark-up of the bill. While mark-up remains possible on Thursday April 10th, given the growing political dissension along party lines on fee shifting, and significant lobby pressure on all sides, it now seems impossible for the Bill to advance in any significant regard before this Friday’s Easter Break. Unless progress is made in the next few weeks the bill is in danger of stalling for the remainder of the year (i.e., after midterm elections conclude).

Patent Reissue as an Alternative to PTAB Amendment Practice

patent reissue ptabStringent PTAB Amendment Process to Drive Patent Reissue Filings

As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.

Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.

Read the rest of this entry »

Insights From the CLS Bank Argument

Alice Corp v CLS BankSupreme Court Considers Patentable Subject Matter Eligibility…Again

The closely watched case of Alice Corp. v. CLS Bank was argued before the Supreme Court of the United States this past Monday. The Court is not expected to radically depart from their significant precedent on patentable subject matter. Yet, the decision will be especially relevant to Covered Business Method (CBM) challenge proceedings before the USPTO’s Patent Trial & Appeal Board (PTAB). Below are some thoughts on the oral argument from my partner Michael Kiklis. Mike has recently authored the treatise entitled The Supreme Court on Patent Law. Read the rest of this entry »

Senate Extends Innovation Act Mark Up a Few More Days

Posted On: Apr. 3, 2014   By: Scott A. McKeown
patent reformSenate Judiciary Committee Continues Compromise Effort

Although discussing the Patent Transparency and Improvements Act of 2013 in today’s executive business meeting, the Senate Judiciary Committee decided they needed a few more days. The Committee intends to work toward releasing a manager’s amendment next Tuesday, April 8th. Proposed amendments are expected in the coming days and may be posted to the committee web page before Tuesday.

Recalibrated Patent Reform Bill Unveiled Thursday?

Posted On: Apr. 2, 2014   By: Scott A. McKeown
patent-reformLeahy/Cornyn Compromise Hammered Out?

Last week, the Senate Judiciary Committee generally considered bill S. 1720 entitled Patent Transparency and Improvements Act of 2013 but held over the matter for this week. It seems there was a bit of a stalemate on the topic of litigation fee shifting and expansion of the Covered Business Method (CBM) challenge proceeding at the USPTO. Senator Cornyn (R-TX) appeared to be the most vocal. Yet, the Senate seems intent on working out a deal to keep the legislation moving. So, we may see the most recent version of the Bill later this week, further amendments to come when the bill moves to the Senate floor.

This is all despite the fact that the AIA has altered the patent assertion landscape to the point where the USPTO is being criticized for being too effective…..that would have been an April Fools joke a few years ago.

PTAB Announces Public Roundtables

Posted On: Mar. 25, 2014   By: Scott A. McKeown
USPTO_LogoRoundtables Kick Off in Alexandria on 4/15

In the weeks ahead, the USPTO’s Patent Trial & Appeal Board (PTAB) will present roundtable programs across the country to share information and collect feedback on the new patentability trials of the America Invents Act (AIA). The first stop will be at the USPTO headquarters in Alexandria Virginia on 4/15 (agenda here).

The program will include an update on recent trial statistics, mock teleconferences, and plenary sessions with Administrative Patent Judges (APJs). Additional roundtable locations include, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas and Denver.