By Scott A. McKeown
| May 4, 2017

"Under This Section" a Limitation on the Scope of 314(d) Appeal Bar?


In today's en banc argument (audio here) the Federal Circuit considered the whether it should overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.

As expected much of the debate focused on whether or not the "under this section" language of 314(d) limited the appeal bar to solely patentability matters (i.e., 314(a); or, whether that phrase swept in related sections, and how the language "less closely related statutes" of Cuozzo impacted the analysis.  Judge Chen and others appeared to find the "under this section" language must have some meaning, and that it must be a restriction on the appeal bar— thereby additionally freeing up questions of RPI/privity for review.  Others on the Court seemed to respond favorably to the government's position that "under this section," in the administrative law context, provided a more expansive bar that swept in all aspects of AIA trial institution.

Stay tuned.

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By Scott A. McKeown
| May 2, 2017

PTAB Ethics Accusations Are Misguided


Critics of the Patent Trial & Appeal Board (PTAB) are not hard to find — attorneys especially hate change.  Since the start of AIA trial proceedings in 2012, we have seen a never ending stream of challenges to these proceedings as "unfair," "unconstitutional," "violating due process," and employing the "wrong litigation standards." All of these challenges failed at either the Federal Circuit, Supreme Court, or both. (not at all surprisingly, given similar challenges to the patent reexamination system decades earlier)  

Perhaps as a result of the failed judicial challenges, criticism of the agency has now turned far more virulent and personal. 

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By Scott A. McKeown
| April 20, 2017

Upcoming CLE, Director Change & New Rules


The chatter around the USPTO's Alexandria campus is the ongoing efforts of the Secretary of Commerce, Wilbur Ross, to select a new USPTO Director. With interviews progressing, some of the bigger names have seemingly fallen out of the picture.  The focus appears to have shifted to attorneys in private practice. Current favorites include a patent litigation partner in DC, the other a patent prosecution focused partner from the West Coast.
Stay tuned.

As noted previously, the PTAB is soliciting comments from the public on possible AIA trial refinements. Comments are specifically welcomed addressing procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. In concert, the agency is also seeking input on outdated rules it might eliminate to satisfy the 2-for-1 requirements of the Trump administration. It seems that once the AIA feedback is collected, and some rules are identified for cancellation, the PTAB will be in a position to move toward a rule package - or issue the long-awaited updating of the PTAB Trial Practice Guide.

For those seeking some PTAB related discussion/CLE in the months ahead, there are a few noteworthy programs.

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. The second day will include a three-hour workshop entitled Parallel Proceedings: The Good, The Bad, and The Ugly. 

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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By Scott A. McKeown
| April 17, 2017

CAFC Emphasizes that Art of Denied Petition Grounds Can Come Back to Haunt Patentees


It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis.  That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board's (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown for a given patent claim.

In the case of partial PTAB trial institutions, Patentees will often employ a strategy to formally object to the aspects of the preliminary record that include reference to prior art of the denied grounds.  The thinking here is that the objection will preserve the right to exclude this seemingly irrelevant art from the record at the close of trial. 37 C.F.R. § 42.64. Yet, art of a denied petition ground can be (and usually is) highly relevant at trial.

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By Scott A. McKeown
| April 11, 2017

Technical Findings of PTAB Increasingly Leveraged in Parallel Court Proceedings


Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid in resolving a number of disputed issues — from claim construction to summary judgement invalidity determinations.

More recently, the International Trade Commission (ITC) has followed suit.
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