By Scott A. McKeown
| January 6, 2017

Moving Forward on Indefinite Claims Could Haunt Petitioners


Often times when preparing an Inter Partes Review (IPR) petition, a claim is encountered that may be of an indeterminate scope under 35 U.S.C. 112. As indefiniteness issues are not considered in IPR, the question then becomes: Should the broadest of the possible competing construction for the claim term be proposed in order to get an IPR instituted on the claim? Or, should the petitioner avoid proposing a construction for an indefinite term to reserve rights for a later, district court challenge?  Of course, holding back claims for a later district court proceeding is typically disfavored given the entire point of IPR, in most cases, is to avoid the expense of district court litigation.  For that reason, most petitioners forge ahead to attack the indefinite claim.

As explained by the Federal Circuit this week in Sonix Technology Co., Ltd. V. Pubs. Int'l Ltd. et al., (here), Petitioners would be wise to note the 112 issue in their petitions.

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By Scott A. McKeown
| January 4, 2017

Bar to Appealing 315(b) Disputes Likely to be Overruled


Back in November, the Federal Circuit issued a non-precedential decision in the Click-To-Call Techs. v. Oracle Corp., which openly questioned the continued viability of Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) post-Cuozzo.  As a reminder, Achates held that issues arising under 35 U.S.C. § 315(b) (i.e,, IPR one year, time bar) could not be appealed to the CAFC, pursuant to 314(d).  

Today, in Wi-Fi One LLC v. Broadcom (here), the Court granted en banc review of the IPR appeal bar.

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By Scott A. McKeown
| January 3, 2017

Fee Setting Authority to be Exercised in 2017 

The USPTO discussed its first ever fee increase under the fee setting authority of the America Invents Act (AIA) in November of 2015.  At the time, an initial proposal was provided to the Public Patent Advisory Committee (PPAC) for review.  While the hope was to have the proposed fee adjustments take effect on October 1, 2016 (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.

Prior to the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials.  With comments collected last month, a Final Rule Notice is imminent.  

Expected Patent Trial & Appeal Board (PTAB) fee increases include:

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By Scott A. McKeown
| December 14, 2016

Expert Agency Need Not Accept Expert Testimony


AIA trial practices of the Patent Trial & Appeal Board (PTAB) are often analogized to that of the district courts. Yet, in practice, there are more differences than similarities between the two. The PTAB, unlike the district courts, is an expert agency. For this reason, its decisions are reviewed on the substantial evidence standard of the Administrative Procedure Act (APA). 5 U.S.C. § 706. Further the PTAB applies the preponderance of the evidence evidentiary standard, which stands in stark contrast to the clear and convincing standard of the district court.  Taken together, these two foundational differences are worlds apart from district court trial practices, and, serve as the primary drivers behind the appeal of the PTAB to patent challengers.

Counsel more accustomed to the favorable patentee standards of the district courts, often times find themselves struggling with the seemingly bizarro world of PTAB administrative trials— such as the agency's ability to disregard expert testimony that would be given weight in the district courts.
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By Scott A. McKeown
| December 12, 2016

CAFC Decision Faults 103 Analysis on Reviewability Grounds


Last week, in In re Nuvasive, the Federal Circuit vacated the PTAB’s Final Written Decision from IPR2013-0056 involving Medtronic, Inc and NuVasive, Inc. (“NuVasive”) and remanded the case “for additional findings and explanations regarding the PHOSITA’s motivation to combine the prior art references.”  (2015-1670, at 13 (Dec. 7, 2016)).

But this case isn't so much about about the law of obviousness but the adequacy of the appellate record under the Administrative Procedure Act (APA).

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