By Scott A. McKeown
| October 28, 2016

USPTO Revisits 2011 Rule Proposal (Rules 56(a) &555(a))

In the wake of the Federal Circuit's 2011 decision in Therasense Inc. v. Becton Dickinson and Co., the USPTO quickly moved to revise the Duty of Disclosure to align with the Court's new, but-for materiality standard—perhaps too quickly.  The 2011 proposal sought to update the relevant rules (1.56 and 1.555) by explicitly adding a short hand, reference to the Therasense case itself. The earlier proposal also intertwined the the "egregious conduct" exception of the Therasense holding (Duty of Candor & Good Faith) with the Duty of Disclosure.

At the time, I questioned whether it was unnecessarily confusing to mix together concepts of conduct and disclosure given the agency's historical segregation of such. Others found it odd that the rule would reference the name of the case as opposed to spelling out the "but-for" materiality standard of its holding.

Today, the USPTO has revisited this earlier proposal, and issued a new proposal.  

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By Scott A. McKeown
| October 17, 2016

Privilege Expanded to Cover Communications with Foreign Agents


Tomorrow's Federal Register will include a NPRM to amend the rules of practice before the Patent Trial and Appeal Board (PTAB). The proposed rule recognizes that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office, communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. (advanced copy here)

The rule would apply to Inter Partes Review (IPR), Post-Grant Review (PGR), the transitional program for Covered Business Method (CBM) patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO.

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By Scott A. McKeown
| October 13, 2016

Preliminary Responses Accompanied by Declaration Evidence: Early Results 


Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are some 5 months removed from the rule modification, early results are in.  

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By Scott A. McKeown
| October 12, 2016

Jury Trial/Article III Challenges to PTAB Expectedly Fail at High Court


Yesterday, the Supreme Court of the United States denied certiorari in two cases challenging the constitutionality of AIA trial proceedings. MCM Portfolio LLC v. Hewlett-Packard Co. et al., and Cooper et al. v Lee et al.  These cases largely presented the same constitutional challenge as that lodged against the USPTO's patent reexamination system in the 1980s, in Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985).  Since that time, patent validity has been found to fall within the "public rights exception," permitting adjudication before non-Article III tribunals.

These more recent cases hoped to distinguish reexamination from AIA trials on the ground that reexamination was not adjudicative, but examinational.  Of course, after Cuozzo, it has been clear that this line of reasoning was certain to fail.
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By Scott A. McKeown
| October 7, 2016

Long Awaited FTC Study Offers Little In Terms of New Ideas


Yesterday, the Federal Trade Commission released an extensive study on Patent Assertion Entities (PAEs) (here). Interestingly, the report segmented PAEs into two classes, Portfolio PAEs (100s of patents) and Litigation PEAs (10 patents or less).  

The study pointed out that Litigation PAEs filed 96% of the cases in the study and accounted for 91% of the reported licenses, but only 20% of the reported revenue. On the other hand, 93% of reported Litigation PAE licenses followed a lawsuit against the eventual licensee and 77% were valued at less than the estimated cost of defending a patent lawsuit through the end of discovery—a threshold below which litigation settlements might be considered nuisance value.  

To combat this behavior the FTC proposed familiar ideas.
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