By Scott A. McKeown
| August 18, 2014
PTAB

AIA Trials Drive PTAB Growth to 235+ Judges

The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board (PTAB) on appeal and AIA trial proceedings. Much of the report was directed to the subject of the recent Federal Register Notice seeking comment on AIA trial proceedings, however, there were some updates of note.

The PTAB reports that come October the AIA Trial Section will be the largest section of the Board. To put this growth in perspective, the Board was comprised of 70 judges, total, in 2011. The AIA Trial Section is already at 85 judges, and growing. (Other sections of the Board include patent interferences, patent reexamination appeals, ex parte application appeals, and management). The Board is expecting to reach 235+ total judges by October. The boost of judges to the trial section is necessary to decide the growing influx of AIA challenges within the 12-month statutory mandate.

Of course, it wont be long before ex parte appellants, especially small/independent inventors, use this growth on the post-grant side as a rallying cry of unfairness.
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By Scott A. McKeown
| August 14, 2014
PTAB co-petitioner

Lack of Severability Could Doom IPR Petition

When considering Inter Partes Review (IPR) as an alternative to a recently initiated patent litigation, a threshold consideration for defendants is the timing and notice requirements of the IPR statutes: 35 U.S.C. §§ 312(a)(2); 315(B). The former is familiar to most, that is, to be timely filed with the Patent Trial & Appeal Board (PTAB), the IPR petition must occur within the 1-year window of 35 U.S.C. §315(b). (within 1 year of the service of a complaint for infringement of the subject patent on the petitioner, real party in interest, or privy of the petitioner).

The latter notice requirement of 312(a)(2) is easily overlooked, and complicated by modern corporate structures. See ZOLL v. Philips, IPR2013-00609, Paper 15 (March 20, 2014) (here)

Given the proliferation of non-practicing entities (NPEs) lodging patent lawsuits against entire industries, it is not uncommon for groups of defendants to contemplate joint IPR filings. The goal is to present a united front to the district court (for motion to stay purposes) by pursuing a singular IPR petition as co-petitioners. When doing so, the complexities of corporate structures, litigation history of privies, indemnification obligations, and common interest agreements are compounded—creating petition vulnerability.

In such situations it may be that one co-petitioner of a given group could doom the petition for all involved.

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By Scott A. McKeown
| August 13, 2014
PTAB

Expired Patents May Follow Shorter Trial Schedule

Some months back, I pointed out how the post-grant challenges of the USPTO's Patent Trial & Apppeal Board (PTAB) now follow a (7) month schedule. Given the 12-month statutory mandate to conclude such post-grant proceedings, the (7) month schedule allows for a (5) month back end for the Board to draft and issue the written decision. This (7) month schedule is down from the more generous (9) month schedlule employed in many 2012-13 filings.

For those challenging/defending expired patents, prepare for an even shorter schedule.
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By Scott A. McKeown
| August 11, 2014

First PGR Petition Argues Patent is FITF Based on 112 Deficiency

Last week, the first petition for Post-Grant Review was filed with the Patent Trial & Appeal Board (PTAB) (PGR2014-00008). The petition targets U.S. Patent 8,684,420, which is directed to a craft kit for making linked bracelets out of colored elastic bands.The '420 patent, as well as related patents are asserted against the petitioner (LaRose Industries) as well as Toys-R-Us.

As a reminder a PGR petition may only be pursued for First Inventor to File (FITF) (i.e., those filed as applications on or after March 16, 2013). The continuation application underlying the '420 patent claims priority to earlier continuations and a provisional application that were filed before March, 16, 2013.  So, in order to pursue PGR of the '420 patent, the petitioner urges that the recently issued claims are not entitled to the priority of the earlier filings for lack of written support. The petitioner does not point to a claim element per se that it urges is unsupported, but instead, to an interpretation of the claim as lacking support. (petition here)

This argument may be an especially challenging sell given the proposed construction is arguably narrower than the Broadest Reaonable Intrepetation (BRI) that will be applied by the PTAB.
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