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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By Scott A. McKeown
| December 6, 2016

PTAB Specific Webinars Offered by USPTO


The full slate of 2017 Boardside Chat webinars have been announced for 2017. The BoardSide Chat series is a bi-monthly webinar that is free to the public. As with past webinars, the Board will share updates on topics related to ex parte appeals and AIA trials. There will be time during each webinar for audience questions and feedback.

Please see the schedule below:
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By Scott A. McKeown
| November 23, 2016

Patent Examiners Leverage AIA Trial Data


Back in April, the USPTO launched the Post Grant Outcomes Pilot, which focused on pending patent applications that are related to patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). The agency now reports that the Post Grant Outcomes Pilot has succeeded in making examiners aware of trials related to applications they are examining, and in turn has facilitated the timely and effective examination of applications.

The idea behind the program is that AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.

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By Scott A. McKeown
| November 22, 2016

"Incidental to" or "Complementary to" Financial Products/Services is Not Enough


Since 2012, the Patent Trial & Appeal Board (PTAB) has reined in its definition of a covered business method (CBM) patent under Section 18 of the AIA. In early CBM decisions, it was enough for the patent specification to reference some incidental or complimentary financial service aspect for the PTAB to find CBM eligibility. Since those early decisions, the PTAB has recalibrated its CBM eligibility analysis. Today, the Board increasingly seeks out claim language explicitly related to financial transactions/services. 

Yesterday, in Unwired Planet, LLC v. Google Inc., (here) the Federal Circuit had occasion to consider CBM eligibility in the context of one of those earlier PTAB decisions. In Unwired, the CAFC rejected the specification-based analysis, a decision that is sure to reverberate across pending CBM appeals of the same vintage now before the Federal Circuit.

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