By Scott A. McKeown
| June 19, 2017

Are You Properly Corroborating Your In Re Katz Declarations?


Every so often a decision comes out of the USPTO's Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. Last week, in EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.,the Federal Circuit considered the degree of corroboration necessary to disqualify a prior art reference as an inventor's own work.  In EmeraChem the Cout made clear that such corroboration may be within the inventor declaration itself, but, it must be more than a mere naked assertion of inventorship.
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By Scott A. McKeown
| June 14, 2017

USPTO Headquarters to Host Half-Day PTAB Conference


As the Patent Trial & Appeal Board (PTAB) has previously announced, it will host a half-day Judicial Conference on June 29, 2017 from 1-5PM.  The conference will be held in the Madison Auditorium.  The program will be directed toward both AIA trial proceedings and ex parte appeal practices. The detailed agenda and webcast link are found below:
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By Scott A. McKeown
| June 13, 2017

High Court to Review Constitutionality of AIA Trials


The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to be on the wall when the same question was posed recently in Oil States Energy Services v. Greene’s Energy Group.  But, then the Federal Circuit wavered somewhat as to its conviction in its own precedent on point.  When asked to reconsider the debate as to whether a patent is purely a private right or public right (as previously decided in MCM Portfolio LLC v. Hewlett-Packard Co. et al.) the CAFC's en banc denial of that request a few weeks ago (here) was a split decision.  (As a reminder, as a public right, a patent may be adjudicated by an Article I court).

Never one to shy away from a new opportunity to set the CAFC straight, the High Court suddenly became interested in the very same debate it only very recently passed over three times, granting certiorari yesterday. (Order here, briefs here)
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By Scott A. McKeown
| June 12, 2017

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 


Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints of patentees who claimed they were disadvantaged by previous rules precluding such new evidence from accompanying a preliminary response. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence, and that absent evidence in kind from patentees, institution was unavoidable.  I had my doubts as to whether this new mechanism would be the boon that patentees had hoped.

Now a year removed, some updated results.
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By Scott A. McKeown
| June 7, 2017

Focus of CBM Standing Analysis: Claim Language


Yesterday, the Federal Circuit denied en banc review in Secure Axcess LLC v. PNC Bank National Assoc., et al.  The rehearing request sought a full court review of America Invents Act (AIA) Sec. 18's definition of a "business method patent." This same issue was denied en banc review in April of this year in Google v. Unwired PlanetAs in that decision, the dissents from denial raised the appeal bar debate now awaiting decision in WiFi One.
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