By Scott A. McKeown
| April 6, 2017

Excess of Jurisdiction vs. Agency Discretion


Earlier this week, the CAFC denied en banc rehearing in Google v. Unwired Planet.  While the denial was largely expected, Judge Hughes' concurrence foreshadows the debate to come in WiFi One.  

That debate, at least for Judge Hughes, is separating matters of agency discretion from questions of constitutionality and/or ultimate statutory authority.

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By Scott A. McKeown
| March 31, 2017

Guest Post: SCA v. First Quality


With TC Heartland still on deck a the Supreme Court, a look back at the Court's most recent patent decision SCA v. First Quality by guest poster, Gary Cohen. Some of my thoughts, are posted on IPwatchdog (here).  Back to PTAB news/notes next week.

SCA v. First Quality
: Limiting the Application of Laches

By Gary Cohen1

On March 21, 2017, the U.S. Supreme Court (“SCOTUS”), in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (2017), reversed an en banc opinion from the Federal Circuit holding that laches could be asserted against a claim for damages incurred within the Patent Act’s 6-year limitations period of 35 USC §286.  The SCOTUS asserted that the en banc opinion impermissibly invoked laches to bar legal relief, with such invocation being unwarranted in view of both the SCOTUS’ holding in Petrella v Metro-Goldwyn-Mayer, Inc., 572 U.S. _____ (2014) and the caselaw preceding the Patent Act of 1952.

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By Scott A. McKeown
| March 23, 2017

Preliminary Responses Accompanied by Declaration Evidence: Updated 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 approaching a year removed from the rule modification, some updated results.  

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By Scott A. McKeown
| March 20, 2017

How Long is the Rehearing Wait?


A Petition for Rehearing may be filed in an AIA Trial Proceeding to challenge an Institution Decisions (ID) or a Final Written Decision (FWD) of the Patent Trial & Appeal Board (PTAB). Of course, a successful Petition for Rehearing is a rare occurrence. Fewer than 5% of cases to date have seen a successful Petition for Rehearing.  

A Petition for Rehearing pursued after an ID is often deemed to have the longest odds of success given the 314(d) bar to appealing such decisions (now pending review in WiFi One). On the other hand, given the ultimate appeal of FWDs to the Federal Circuit, it may be that such filings inherently enjoy closer scrutiny, and hence, slightly better odds of success.

In any event, both patentees and petitioners alike sometimes find it necessary to pursue rehearing for any number of strategic goals. But, given the lack of a mandated deadline for such decisions, the question becomes: "How Long is the Wait?"

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By Scott A. McKeown
| March 8, 2017

UTCLE Program Covers Patent Landscape


For those seeking some PTAB related discussion/CLE this week, there are a few exciting programs.

Tomorrow through Friday of this week, the USPTO (Alexandria) hosts UTCLE Advanced Patent Law Institute (here). This program will offer a broad range of patent related topics, including extensive discussions of PTAB trial practice and the impact of recent Federal Circuit Decisions this afternoon.

Friday March 10th: For those on the west coast, the Washington State Bar Association will hold its 22nd Annual Intellectual Property Institute in Seattle. (here)  This program will also offer a broad range of IP related topics, including a discussion of best practices for PTAB trials.

In the weeks ahead there are a number of other programs scheduled for both coasts.

March 21st: MIP U.S. Patent Forum 2017 will be held in Palo Alto (here). This program offers a full day program focusing on AIA trial practices.

May 10th-11th: American Conference Institute presents its Third Annual Post-Grant PTO Proceedings in New York City (here). This two-day event will cover a variety of AIA Trial Proceeding topics.

May 16, 2017: MIP PTAB Forum 2017 will be held in New York City. (here)  This is a full-day forum on PTAB trial practices.

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

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