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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Author Archive

Improving PTAB Motion to Amend Practice

Posted On: Apr. 24, 2014   By: Scott A. McKeown
PTAB amendmentTweaks to Strict Motion Guidelines Are in Order

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled it’s charge as a speedy, cost effective alternative to patent litigation. The PTAB has been so effective in cancelling patent claims, based on the limited, preliminary results, that the Board is being criticized as anti-patent. As discussed earlier this week, this criticism is unfounded as the USPTO will always be a significantly more patent challenger friendly forum relative to the district court. Still, there is another aspect of the early statistics that patentees find of equal concern, the perceived impossibility of successfully amending the claims of a patent during a PTAB challenge.

To date, the PTAB has not granted a single motion to amend.

The PTAB properly points out that that there is a very small sample of cases in which amendment has even been attempted, and a successful motion is expected to be issued shortly. Yet, the current statistical situation (as transient as it may be), coupled with the fact that the strict motion to amend guidelines have always been viewed unfavorably, is resulting in a bit of a black eye. This at a time when maintaining the BRI standard in PTAB proceedings is being justified based upon the ability to amend.

To the Board’s credit, the current round table initiative is designed to receive feedback for the purpose of revising some rules of practice. To this end, below are some changes that I believe would improve patentee prospects for amendment while maintaining the PTAB’s mission to expeditiously decide these important, but complex issues of patentability. Read the rest of this entry »

Speed of PTAB Fuels Criticism of Initial Trial Results

Posted On: Apr. 22, 2014   By: Scott A. McKeown
PTAB timelineCritics Ignore Long Standing Realities

Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings to date. That is, some consider the heavy number of claim cancellation decisions as evidence of a bias against patentees. Nothing could be further from the truth.

First, patents now being asserted were drafted to survive district court scrutiny. As is well known, when in court, patentees benefit from a clear and convincing evidentiary standard, a presumption of patent validity, and a non-technical audience. Due to the significant obstacles of demonstrating invalidity before a court, infringement concerns have been the primary driver of patent procurement practices to date. For this reason patents are routinely procured to obtain the broadest possible claim scope for the purpose of ensnaring infringers; often times overly broad.

On the other hand, the PTAB counteracts each Read the rest of this entry »

Marquee PTAB CLE Program Heads to San Francisco 4/28

Posted On: Apr. 21, 2014   By: Scott A. McKeown
postgrantCLELongest Running PTAB Only CLE Stops in San Francisco Next Monday

A day before the the PTAB round table event comes to Santa Clara on 4/29, the popular Practicing Law Institute program USPTO Post-Grant Patent Trials 2014 makes its yearly stop in San Francisco. This day long program, dedicated entirely to post grant patent practice was last held on March 27, 2014 in New York City where it set attendance records. This is the last stop of the year for this acclaimed program and faculty, a live webcast is also available.

The day-long schedule includes:

-The First Eighteen Months of Post-Grant Patent Challenges at the Patent Trial and Appeal Board (PTAB)

-The PTAB Petition, Pre-Trial Phase, and Trial Institution

-PTAB Trial Conclusion - The Oral Hearing, Final Written Decision, Rehearing and Appeals to the CAFC

-Covered Business Method (CBM) Challenges and Post-Grant Review (PGR)

-Optimal Strategy and Tactics in the Post-Grant Trial World, Including Parallel Litigation Proceedings

Copies of the best selling PLI treatise entitled Post-Grant Proceedings Before the Patent Trial and Appeal Board (Second Edition) are available (here). I hope to see you there.

Senate Compromise Details

Posted On: Apr. 18, 2014   By: Scott A. McKeown
USA-COURT/SOTOMAYORSenate Compromise Outlined

While still at least a week away from the official Manager’s Amendment on the The Patent Transparency & Improvement Act, a document has been circulating purporting to outline the compromise between Senators  Schumer (D-NY)and Cornyn (R-TX). (here). Most of the changes are directed to fee shifting and patent litigation pleading and discovery controls.

PTAB Roundtable Webcast Today

Posted On: Apr. 15, 2014   By: Scott A. McKeown
USPTO_LogoWebcast today, 1-4PM EST

As a reminder, the Patent Trial & Appeal Board (PTAB) roundtable series kicks off today in Alexandria.

The Chief Judge will kick off today’s program with some performance information, including entirely new statistical categories of data. Thereafter, judges of the PTAB will conduct mock telephone conferences, and I along with three other practitioners will close out the program discussing strategy, practice tips and concurrent proceeding concerns.

Alexandria, VA Webcast – April 15, 2014

PTAB Roadshow Effort Kicks Off in Alexandria on 4/15

Posted On: Apr. 10, 2014   By: Scott A. McKeown

PTAB roundtableRoundtable Discussions to Spur Dialogue on Possible Rule Changes

Roughly eighteen months have passed since the USPTO’s implementation of the new post grant patent challenges of the America Invents Act (AIA). Since the rules for implementing these post grant patent proceedings were developed under an aggressive time schedule, as promised, the USPTO is now revisiting those rules. In the months ahead, the USPTO will be considering whether revisions/refinements to the Patent Trial & Appeal Board’s (PTAB) rules are in order. To kickoff the effort, the PTAB will be conducting informational/roundtable discussions around the country. Once the roadshows are concluded, the USPTO is planning a Federal Register Notice this summer to collect additional stakeholder comments.

The roadshow agenda includes a discussion of AIA trial statistics, lessons learned, and techniques for successful motions practice.  The roundtables are free and open to all with seating available on a first-come, first-served basis. Stops include, Alexandria (webcast available), New York, Chicago, Detroit, Santa Clara, Seattle, Dallas, and Denver.

Schedule and agenda are posted below. Read the rest of this entry »

Senator Leahy Announces Compromise on Patent Reform Bill

Posted On: Apr. 9, 2014   By: Scott A. McKeown
patentreformCompromise Reached, Manager’s Amendment Promised Post-Recess

With many fearing that the Senate Judiciary Committee had lost their way on S.1720 known as The Patent Transparency & Improvement Act, news comes today that after weeks of partisan wrangling compromise has finally been reached. Senator Leahy posted the following statement on his webpage minutes ago:

For weeks, members of the Judiciary Committee have been engaged in extensive bipartisan negotiations on legislation to address abuses in the patent system.  We have made enormous progress, and we now have a broad bipartisan agreement in principle.  This is a complex issue and we need additional time to draft the important provisions that have been the subject of discussion.

I have talked to many Senators on both sides, and because I want to be sure everyone is comfortable with how these pieces fit together, I will circulate a manager’s package the day we return from recess, and the Judiciary Committee will consider that legislation the first week we are back.

Senate Struggles to Recalibrate Patent Reform Bill

Posted On: Apr. 8, 2014   By: Scott A. McKeown
Patent reform stalemateStalemate Along Ideological Lines

The Senate Judiciary Committee continues to struggle with S.1720 (Patent Transparency & Improvements Act of 2013). Yet again, the Committee has postponed mark-up of the bill. While mark-up remains possible on Thursday April 10th, given the growing political dissension along party lines on fee shifting, and significant lobby pressure on all sides, it now seems impossible for the Bill to advance in any significant regard before this Friday’s Easter Break. Unless progress is made in the next few weeks the bill is in danger of stalling for the remainder of the year (i.e., after midterm elections conclude).

Patent Reissue as an Alternative to PTAB Amendment Practice

patent reissue ptabStringent PTAB Amendment Process to Drive Patent Reissue Filings

As discussed previously, patent owners continue to struggle with the motion-based amendment requirements of the USPTO’s Patent Trial & Appeal Board (PTAB). In recent months, patentees subject to Inter Partes Review (IPR) and Covered Business Method (CBM) challenges have begun exploring alternative USPTO avenues for presenting amendments. In particular, patentees are following the advice of the PTAB and initiating patent reissue and reexamination proceedings.

Patentees generally find patent reexamination more attractive than patent reissue. This is due to the special dispatch accorded a patent reexamination, the relatively narrow scope of prior art review, and insulation from 112 and 101 issues. However, as made clear recently, patent reissue may be the only escape for patentees struggling at the PTAB.

Read the rest of this entry »

Insights From the CLS Bank Argument

Alice Corp v CLS BankSupreme Court Considers Patentable Subject Matter Eligibility…Again

The closely watched case of Alice Corp. v. CLS Bank was argued before the Supreme Court of the United States this past Monday. The Court is not expected to radically depart from their significant precedent on patentable subject matter. Yet, the decision will be especially relevant to Covered Business Method (CBM) challenge proceedings before the USPTO’s Patent Trial & Appeal Board (PTAB). Below are some thoughts on the oral argument from my partner Michael Kiklis. Mike has recently authored the treatise entitled The Supreme Court on Patent Law. Read the rest of this entry »