By Scott A. McKeown
| June 5, 2017

Overlap in Administrative Trials: ITC v. PTAB


(THIS EVENT WILL BE RESCHEDULED)

Next week, the June edition of the PatentsPostGrant.com free webinar series will be held on Thursday June 15th @12:30PM (est). The June webinar is entitled: ITC as a PTAB Antidote: Navigating Competing Administrative Trial Strategies & Pitfalls. (speakers: Scott McKeown & Alex Hadjis).  As the title suggests, the webinar will focus on the growing interplay between ITC and PTAB proceedings, with a particular focus on leveraging PTAB records at the ITC. Register (HERE). (or copy the following link into your web browser: to https://oblon.webex.com/oblon/onstage/g.php?MTID=e280fdde74642a509e6d02fd1f0bb94ce
 
The formal portion of the PatentsPostGrant.com 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
| June 1, 2017

Unified Patents' Offers First Quantitative Study of TC Heartland Impact 


Since TC Heartland v. LLC D/B/A Heartland Food Products Group V. Kraft Foods Group Brands LLC. made clear that patent venue is not coextensive with personal jurisdiction, debate has swirled as to the impact of this case on the Eastern District of Texas (EDTX).  Of course, the focus is properly on the EDTX as it is the district that effectively broke the system, as I and others made clear to the Supreme Court (Unified Patents amicus). But, little if any of the recent speculation has looked at hard numbers, until now.
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By Scott A. McKeown
| May 31, 2017

USPTO HeadQuarters to Host Half-Day PTAB Trial Conference


As the Patent Trial & Appeal Board (PTAB) has previously announced, it will host a half-day Judicial Conference on June 29, 2017 from 1-5PM.  The conference will be held in the Madison Auditorium.  While an agenda is yet to be released, the agency describes the planned conference as:
[A]n excellent opportunity to learn about PTAB, including practice tips from multiple judges and practitioners, as well as practical insights on the latest PTAB developments. The conference is free of charge and you may attend in-person or by webinar. No registration is required. For those who attend in-person, an informal reception will be held after the conference, offering an opportunity to chat and mingle with PTAB judges and other attendees.
Hope to see you there.
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By Scott A. McKeown
| May 24, 2017

Webinar to Cover Flurry of CAFC Developments & SAS Cert.


Tomorrow, May 25, 2017, I will present a webinar for Strafford Legal on: Evolving PTAB Trial Practice: Navigating Complex Procedural Rules (live webinar: 1:00PM-2:30PM EDT)
The program will cover a number of important topics, not the least of which is the expected impact of pending en banc decisions of the Federal Circuit as well as the potential impact of the SAS debate now at the Supreme Court.  

On June 15th, I, along with my partner Alex Hadjis will present the free PatentsPostGrant.com webinar entitled: ITC as a PTAB Antidote : Navigating Competing Administrative Trial Strategies & Pitfalls (live webinar:1:00pm-2:30pm EDT) (register here)

I hope to hear from you at one of these upcoming events.

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By Scott A. McKeown
| May 23, 2017

Recent Decision out of EDTX First to Get PTAB Estoppel Provision Correct


IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).

As previously discussed, IPR estoppel has been unnecessarily complicated by the PTAB's redundancy practice as discussed in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016

For example, the district court in Intellectual Ventures I LLC v. Toshiba Corp., Civ. No. 13-453, explained that, based on Shaw, it was necessary to interpret the scope of estoppel very narrowly, only applying estoppel to prior art or publications actually instituted in the IPR.  As this decision contradicts the plain language of the estoppel statute, it has been heavily criticized as too literal a reading of Shaw.  More recently, several other district courts have taken a more expansive view of Shaw.  But, in my opinion the first district to actually get it right, is, surprisingly, this week's venue whipping boy— the Eastern District of Texas (EDTX).
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