By Scott A. McKeown
| March 20, 2017

How Long is the Rehearing Wait?


A Petition for Rehearing may be filed in an AIA Trial Proceeding to challenge an Institution Decisions (ID) or a Final Written Decision (FWD) of the Patent Trial & Appeal Board (PTAB). Of course, a successful Petition for Rehearing is a rare occurrence. Fewer than 5% of cases to date have seen a successful Petition for Rehearing.  

A Petition for Rehearing pursued after an ID is often deemed to have the longest odds of success given the 314(d) bar to appealing such decisions (now pending review in WiFi One). On the other hand, given the ultimate appeal of FWDs to the Federal Circuit, it may be that such filings inherently enjoy closer scrutiny, and hence, slightly better odds of success.

In any event, both patentees and petitioners alike sometimes find it necessary to pursue rehearing for any number of strategic goals. But, given the lack of a mandated deadline for such decisions, the question becomes: "How Long is the Wait?"

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By Scott A. McKeown
| March 8, 2017

UTCLE Program Covers Patent Landscape


For those seeking some PTAB related discussion/CLE this week, there are a few exciting programs.

Tomorrow through Friday of this week, the USPTO (Alexandria) hosts UTCLE Advanced Patent Law Institute (here). This program will offer a broad range of patent related topics, including extensive discussions of PTAB trial practice and the impact of recent Federal Circuit Decisions this afternoon.

Friday March 10th: For those on the west coast, the Washington State Bar Association will hold its 22nd Annual Intellectual Property Institute in Seattle. (here)  This program will also offer a broad range of IP related topics, including a discussion of best practices for PTAB trials.

In the weeks ahead there are a number of other programs scheduled for both coasts.

March 21st: MIP U.S. Patent Forum 2017 will be held in Palo Alto (here). This program offers a full day program focusing on AIA trial practices.

May 10th-11th: American Conference Institute presents its Third Annual Post-Grant PTO Proceedings in New York City (here). This two-day event will cover a variety of AIA Trial Proceeding topics.

May 16, 2017: MIP PTAB Forum 2017 will be held in New York City. (here)  This is a full-day forum on PTAB trial practices.

I hope to see you at one of these upcoming events.

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By Scott A. McKeown
| March 6, 2017

Practical Impact of Joinder Practice, Stricter Estoppel


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).  Once upon a time, the reasonably could have raised component was thought to refer to art that could have been raised in the initial petition — at least, that was what Congress seemed to intend. Since that time, the Federal Circuit has made clear that this statutory estoppel is linked to the grounds presented at trial, and not those included in the petition and rejected by the Board as redundant. 

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), the Court held that statutory estoppel does not apply to grounds denied by the Board as redundant.  The Court reasoned that estoppel cannot flow from grounds that are not part of the trial or any resulting decision from which estoppel can attach.

Rightly or wrongly, district courts have construed Shaw to extend to any potential trial ground not presented in the petition, not just those denied on redundancy grounds. This development has been a boon for original petitioners. But, a recent decision has made clear that petitioners seeking joinder may forfeit the Shaw estoppel benefits.

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By Scott A. McKeown
| February 24, 2017

Inaugural PTAB Bar Association Conference Coming to DC


Next week brings the now Sold Out, Inaugural PTAB Bar Conference. The PTAB Bar was founded to help establish best practices for this unique forum, foster communication among stakeholders and the PTAB, and aid practitioners in staying abreast of rule making, procedure and PTAB jurisprudential evolution. The Inaugural Conference of the PTAB Bar Association will be held March 1-3rd at the Ritz Carlton in Washington D.C. (here) The 3-day program offers a boot-camp for new practitioners on Wednesday March 1, followed by a full day program on Thursday, March 2nd, and a half day program on Friday, March 3rd.

Join the Organization to keep abreast of future event, meetings, practice updates and CLE. 

Also, next week, for practitioners handling ex parte appeals before the PTAB, AIA trials, or drafting claims to computer implemented inventions, the IPO Chat Channel will offer a timely review of emerging Board decisions on conditional claiming practices this Wednesday, March 1st, entitled: Ex Parte Schulhauser and Claim Drafting
for Computer-Implemented Inventions (register here)

For additional PTAB related events in March, see my earlier post on Spring CLE (here)

I hope to see you at one of these upcoming events.

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By Scott A. McKeown
| February 22, 2017

In re Packard Inextricably Linked to Patent Examination Practices?


Back in 2014, the Federal Circuit determined the standard for a USPTO indefiniteness analysis in In re Packard (here). This standard was more deferential to the agency as compared to the district court's "reasonable certainty" standard later enunciated in Nautilus v, Biosig Instruments Inc.  When Packard issued, I questioned whether that standard could be argued to apply to post-grant proceedings. This was because the Court's determination in Packard was deeply rooted in patent examination practices.

More recently, the Patent Trial & Appeal Board (PTAB) has adopted Packard in some of its decisions analyzing claims under 35 U.S.C. § 112 (e.g., PGR20015-00018, Telebrands Corp. v. Tinnus Enterprises LLC). But, decisions of the Federal Circuit since Packard, have made clear that grounds of unpatentability in AIA trial proceedings are not akin to rejections in patent examination.  As explained by the court in In re Magnum Oil Tools Int’l, Ltd. the prima facie procedural mechanisms of patent examination do not comport with proper AIA trial practices.

Will the CAFC pull the rug out from under the PTAB's application of Packard in AIA trails?

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