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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.

Archive for the ‘Inter Partes Review’ Category

PTAB Institution Rate Dips Into 60% Range

Posted On: Jul. 22, 2014   By: Scott A. McKeown
Past Three Months of PTAB Statistics Tell A Different Story

PTAB statisticsLast week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage points in the past year. However, the averaging of 2012-14 proceedings does not tell the current story. Whether you agree with my explanation of this recent phenomena as a reflection of poor petition quality or not, there is clearly a heightened focus on the preliminary proceeding (i.e., petition stage).

What was left out of last week’s post was a snap shot of what is actually going on at the PTAB  today— the effective institution rate right now. Read the rest of this entry »

PTAB Dials Back Petitioner Success Rate

Posted On: Jul. 17, 2014   By: Scott A. McKeown
PTAB Grant Rate2014 PTAB Institution Rate Retreats to 70% Range

To date, a major patentee criticism of Inter Partes Review (IPR) & Covered Business Method (CBM) patent challenges has been their high rate of institution. Patentees were quick to point to the 85+% institution rate of the Patent Trial & Appeal Board (PTAB) as evincing an anti-patent bias. This dull roar was then amplified by then CAFC Chief Judge Rader labeling the PTAB a patent “death squad.” In response, the PTAB patiently explained the relatively small sample size of instituted proceedings, the fact that trial does not always go forward on all claims, and that there was a natural selection of weak patents in the early days of IPR and CBM. The PTAB suggested that in the months ahead, the institution rate would normalize. Yet, these reassurances fell on mostly deaf ears.

Now that a larger sample size is available (and soon to be growing by 100+ decision every month), the PTAB predictions are beginning to materialize. Read the rest of this entry »

PatentsPostGrant.com Webinar July

Posted On: Jul. 16, 2014   By: Scott A. McKeown
post grant webinar Free Webinar Series – July

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, July 23rd @12:30 (est). The July webinar is entitled:

Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape. (Speakers are Scott McKeown, Dianna Devore Ph.D, and Chris Bullard).

The formal portion of the webinar will begin at 12:30 Eastern and will last for approximately 60 minutes. After the presentation there will be a 30 min Q&A period. To attend the webinar please sign up by clicking (here). You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. VA CLE credit will be provided.

We look forward to speaking with you during the webinar.

(For those seeking PTAB strategy CLE this month, please join my colleague Todd Baker tomorrow on AIPLA’s webinar enitled PTAB: Tactics for Launching a Patent Attack and for Surviving One)

PTAB Finds BRI Claim Construction No Different Under Phillips

Posted On: Jul. 15, 2014   By: Scott A. McKeown
PTAB-BRIFavorite Criticism of PTAB Proceedings Falls Flat

The Patent Trial & Appeal Board (PTAB) is currently seeking feedback from the public on the first two years of administrative patent trials of the America Invents Act (AIA). The very first issue presented for consideration in the recent Federal Register Notice is the continued use of the broadest reasonable claim interpretation (BRI) in PTAB post-grant patent challenge proceedings.

Since the passage of the America Invents Act (AIA) some patentees have been advancing the notion that BRI should not be employed by the PTAB. Instead, they argue that BRI claim construction should be replaced with the claim construction practices of the district court (i.e., Phillips v. AWH). Critics insist that the new AIA proceedings are more “adjudicative in nature” as compared to examiner based patent prosecution/reexamination practices, and, that PTAB post-grant patent practices should be consistent with the courts. Of course, the true concern at the heart of this “consistency” argument is that the Board is arriving at an unduly broad construction compared to that of the courts. That is, critics of PTAB claim construction practices believe a Phillips analysis to be inherently narrower than BRI. (i.e., more patent validity/patentability friendly).

This belief is mainly driven by cases where a patent claim previously construed by a court, is later construed to have a broader scope by the PTAB. The fault in this logic is two-fold. First, it is assumed that a Phillips analysis necessarily dictates a narrower construction, and, second, that the district court constructions were not unduly narrow in the first instance. Read the rest of this entry »

First 24 Months of IPR Brings More Filings Than Entire History of Inter Partes Patent Reexamination

Posted On: Jul. 8, 2014   By: Scott A. McKeown
PTAB-workloadFiling Rate to Strain PTAB Bandwidth?

In the entire 13 year history of inter partes patent reexamination, 1919 such reexamination requests were filed. Granted, only patents that stemmed from post 11/29/99 patent applications were eligible. But still, even in 2012 (the high water mark for such filings) the USPTO received only 530 in total.

Since passage of the America Invents Act (AIA), Inter Partes Review (IPR) and Covered Business Method challenges continue to break records with each passing month. In June alone the Patent Trial & Appeal Board (PTAB) received over 190 IPR and CBM petitions. By September 16 2014, the PTAB will have seen 2000+ petition filings in 24 months.

Can the PTAB keep up with this unprecedented surge in demand? Read the rest of this entry »

PTAB Requests Feedback to Optimize AIA Post-Grant Patent Challenges

Posted On: Jun. 26, 2014   By: Scott A. McKeown
PTAB rulesFederal Register Notice to Issue Tomorrow

As promised, even a bit early, the USPTO will issue a Request for Information in tomorrow’s Federal Register. The Notice, entitled,
Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board, will pose the following 17 questions:

Claim Construction Standard:

1. Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?

Motion to Amend:
2. What modifications, if any, should be made to the Board’s practice regarding motions to amend?

Patent Owner Preliminary Response:
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all

4. Under what circumstances should the Board permit discovery of evidence of nonobviousness held by the petitioner, for example, evidence of commercial success for a product of the petitioner? What limits should be placed on such discovery to ensure that the trial is completed by the statutory deadline?

Real Party in Interest:
5. Should a patent owner be able to raise a challenge regarding a real party in interest at any time during a trial?

Additional Discovery:
6. Are the factors enumerated in the Board’s decision in Garmin v. Cuozzo, IPR2012-00001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered?

Multiple Proceedings:
7. How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.

8. What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed?

9. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted?

10. Under what circumstances, if any, should an AIA trial be stayed in favor of a copending reexamination proceeding or reissue proceeding? If a stay is entered, under what circumstances should the stay be lifted?

11. Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be consolidated with an AIA trial?

12. How should consolidated proceedings be handled before the USPTO? Consolidated proceedings include, for example: (i) consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding.

13. Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments previously were presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding or in a
reissue proceeding?

Extension of 1 Year Period to Issue Final Determination:
14. What circumstances should constitute a finding of good cause to extend the 1-year period for the Board to issue a final determination in an AIA trial?

Oral Hearing:
15. Under what circumstances, if any, should live testimony be permitted at the oral hearing?

16. What changes, if any, should be made to the format of the oral hearing?

17. What other changes can and should be made in AIA trial proceedings? For example, should changes be made to the Board’s approach to instituting petitions, page limits, or request for rehearing practice?

Comments are due to the agency September 16, 2014.  The Notice also address some of the feedback provided to the PTAB during round-table programs of the last few months. An advanced copy of the notice is found (here).

75% Success Rate for IPR Driven Stays

Posted On: Jun. 19, 2014   By: Scott A. McKeown
District Court Stays on the Rise Thanks to PTABIPR-stay

Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of patent reexamination proceedings at the USPTO. For this reason, motions to stay a litigation pending patent reexamination were often denied based upon the perceived prejudice of a 5-6 year delay (typical of reexaminations through appeal). The patent challenge proceedings of the AIA (IPR, CBM and PGR) were specifically designed, at least in part, to remedy the pendency issue.

The new patent challenge proceedings of the AIA are conducted before the USPTO’s Patent Trial & Appeal Board (PTAB) and must conclude, by statute, within 12 months of trial order. Many districts across the country have recognized the improved speed of the PTAB. Not surprisingly, the success rate for staying cases pending USPTO review has significantly improved. Read the rest of this entry »

PTAB Webinar Thursday 6/12

Posted On: Jun. 11, 2014   By: Scott A. McKeown
Webinar - Online e-Learning SeminarStrafford Legal PTAB Webinar

On June 12, Strafford Legal presents the webinar entitled:Leveraging Post Grant Proceedings Before the PTAB. I, along with my partner Greg Gardella, will explore the surging popularity of the PTAB and update registrants on the evolution of PTAB practices over the past 12 months (including a Q&A session). I look forward to participating in this interactive exchange.

Inexperienced Attorneys Tax PTAB Resources

Posted On: Jun. 11, 2014   By: Scott A. McKeown
Growth in PTAB Post-Grant Filings May Require Changes to Workflow

PTABThis time last year, the Patent Trial & Appeal Board (PTAB) had about 250 Inter Partes Review (IPR) and Covered Business Method (CBM) petitions pending. Only half that number were in the trial phase.

One year later, the PTAB has received 1500 IPR and CBM petitions, roughly half of which are now in trial phase. The surge in filings over the past two months has been especially pronounced, averaging 150 petitions per month. This is the new normal.

The chart below is from June 6, 2014. (Click to Enlarge)


As explained at the PTAB roadshow, the Trial Section of the PTAB consists of roughly 70 judges at present. (with plans to add another 52 by October). While the influx of judges will certainly help handle the growing workload, given the magnitude of trials that will soon be pending, the PTAB will need to adjust the daily workflow to maintain their 12 month trial mandate. Read the rest of this entry »

IPR Joinder Limits Impact of WARF Decision

Posted On: Jun. 9, 2014   By: Scott A. McKeown
joinder PTABArticle III Standing a Rare Concern at PTAB

Last week, the Court of Appeals of the Federal Circuit (CAFC) determined that public interest groups challenging patents at the USPTO must demonstrate Article III standing to appeal failed challenges to the Court. In Consumer Watchdog v. WARF, Consumer Watchdog  appealed  a determination of the Patent Trial & Appeal Board (PTAB) to uphold claims of WARF patent 7,029,913 directed to stem cell cultures (inter partes reexamination 95/000,154). (here). In dismissing the appeal, the Court explained that while Consumer Watchdog was provided a procedural right to appeal by the inter partes reexamination statutes, an “injury in fact” was necessary to confer Article III standing. That is, such appeals require “a particularized, concrete stake in the outcome of the reexamination.”  Consumer Watchdog’s status as an entity that does not compete with the patent owner was strongly emphasized in the decision. The court left “it to future panels to decide whether, under other circumstances, the preclusive effect of the estoppel provisions could constitute an injury in fact.”

While an interesting decision, such public interest challenges were exceedingly rare in inter partes patent reexamination (discontinued by the AIA in 2012). On the other hand, Inter Partes Review (IPR) has seen a fair amount of activity from such entities. For this reason, some have speculated that this decision may have a chilling effect on such filings going forward. However, since IPR challenges are not governed by reexamination procedural practices, such filings are likely to continue. Read the rest of this entry »