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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By Scott A. McKeown
| October 5, 2016

Common USPTO Debate Clarified by New Precedential Decision Ex parte Schulhauser


A common debate at the PTO in recent years at both the examination and Board level has been the appropriate treatment of a claimed condition precedent.  That is, if a claim recites that certain functionality only occurs on certain conditions, does that alternate functionality constrain the broadest reasonable scope of the claim?  

In Ex parte Schulhauser (here) the Board makes clear that the answer to this question may depend on whether or not the claim is presented in a method or apparatus claim format.
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By Scott A. McKeown
| October 3, 2016

Fee Setting Authority to be Exercised for FY 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 initial hope was to have the proposed fee adjustments take effect on October 1st (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.  At long last, the Notice of Proposed Rule Making (NPRM) issued today.  Since a Final Rule Notice must follow the NPRM, the proposed fee adjustments will not go into effect until calendar year 2017.

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

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By Scott A. McKeown
| September 30, 2016

PTAB Boot Camp & More


For those seeking some PTAB related discussion/CLE in the weeks ahead, there are a number of upcoming programs.

First up, next Friday October 7th, the George Washington University Law School will host an IPR-CBM Roundtable Discussion (here) from 12-6PM in the Faculty Conference Center; Fifth Floor, Burns Building Washington, DC 20052. (CLE is not offered for this program)

On October 18-20th the PTAB Bench & Bar Conference will be held at the Center for American & International Law in Plano Texas.  This program offers an afternoon "Bootcamp" with PTAB judges and practitioners on the 18th.  On the 19th the program focuses on “Advanced Practice before the PTAB.”  This second full day offering provides deep dive sessions for those who manage PTAB proceedings, practice before the PTAB, and are looking for a unique program and learning experience that focuses on current issues and best practices. On the afternoon of the 19th through to the 20th the program brings in the perspectives of several Texas and Delaware District Court Judges, as well as Judge Chen of the Federal Circuit and USPTO Director Michelle Lee.

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

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