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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 ‘Business Method Patent Challenge’ Category

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 »

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 »

PTAB Announces Public Roundtables

Posted On: Mar. 25, 2014   By: Scott A. McKeown
USPTO_LogoRoundtables Kick Off in Alexandria on 4/15

In the weeks ahead, the USPTO’s Patent Trial & Appeal Board (PTAB) will present roundtable programs across the country to share information and collect feedback on the new patentability trials of the America Invents Act (AIA). The first stop will be at the USPTO headquarters in Alexandria Virginia on 4/15 (agenda here).

The program will include an update on recent trial statistics, mock teleconferences, and plenary sessions with Administrative Patent Judges (APJs). Additional roundtable locations include, New York City, Chicago, Detroit, Silicon Valley, Seattle, Dallas and Denver.

Medical Technology Patents at the PTAB

medical-technology-IPRIPR…Not Just For Trolls

With Congress on the verge of passing still more legislation directed at alleviating the dreaded “patent troll” problem, perhaps Congress should pause to consider what has already been accomplished over the last 18+ months. As pointed at by Gene Quinn at IPwatchdog last week, Congress is in a rush to pass further patent reform legislation in the name of “helping Main Street America.” Yet, since September 16, 2012 the America Invents Act (AIA) has been wildly successful in providing a cheaper, faster, low cost alternative to patent litigation. Inter Partes Review (IPR) in particular has become the favorite anti-troll measure.

Typically, an IPR is pursued against the subject patent so that a stay of the costlier litigation can be obtained. Depending upon the jurisdiction/judge involved, the ability to stay a litigation pending USPTO review has increased significantly since the passage of the AIA. While this change in landscape is welcome news for those battling trolls, IPR is equally concerning for those patentees considered to be true technology innovators. Read the rest of this entry »

March 2014 Update to PTAB Trial Statistics

Posted On: Mar. 14, 2014   By: Scott A. McKeown
PTABPTAB Breaks 1000 Threshold for CBM and IPR Filings

Last week, the USPTO issued the official tallies/progress statistics for Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings. As of March 6, 2014 the Patent Trial & Appeal Board (PTAB) has received 924 IPR petitions and 127 CBM petitions, 1056 petitions in total. Since the last update in January, the PTAB has seen 150 additional petition filings. These numbers are well beyond the 281 filing limit per year Congress envisioned in the America Invents Act. The PTAB is seeing 281 filings roughly every 2-3 months. (Click to Enlarge)



Not surprisingly, the vast majority of IPR petitions remain in the predictable arts, significant concentrations being in consumer electronics and mobile communication technologies. (a favorite haunt of non-practicing entities (NPEs))

aia_statistics_CAlthough difficult to gauge from the numbers due to the lag in filing of preliminary responses across yearly boundaries and larger sample in 2014 filing numbers, it seems that patent owner’s are beginning to appreciate the limited value of preliminary responses. The number of waived responses in 2014 has already surpassed 2013 numbers.

aia_statistics_DBased upon the growing sample, the settlement/adverse judgment rate appears to be leveling out at around 15-20%. As more proceedings mature toward written decision the rate may increase. Of course, it is within the discretion of the PTAB to continue to written decision for late stage settlements, especially those attempted after the patent owner response. (See CBM2012-00007)

Is The Eastern District of Texas Thwarting the America Invents Act?

Posted On: Mar. 11, 2014   By: Scott A. McKeown

Time to Adapt - Clock

Refusal to Stay Pending CBM Unusual

Last week I discussed the creation of a “Track B” docket by the Eastern District of Texas (EDTX) and explained how this docket could force some defendants away from the more cost effective alternatives of the USPTO’s Patent Trial & Appeal Board (PTAB). On the heels of the Track B announcement, the Court issued a second denial of a stay of the patent dispute between VirtualAgility Inc., v. Salesforce.com Inc., et al. (here) pending PTAB review. In this case, a Covered Business Method (CBM) challenge was filed against the patent at issue. By way of reminder, CBM is the proceeding created by Congress that does all but mandate a stay pending CBM…..at least outside of Texas. Read the rest of this entry »

Could Track B Scheduling in EDTX Benefit Patent Trolls?

Posted On: Mar. 3, 2014   By: Scott A. McKeown
Texas Track BEDTX Judge Davis Announces New, Faster “Track B” for Patent Cases

Last week, Chief Judge Leonard Davis of the Eastern District of Texas (EDTX) issued an Order (here) creating a second, Track B for patent cases. Track B as the name implies establishes a different, accelerated track as compared to the typical EDTX schedule (Track A). Litigants may opt for Track B by agreement, or be selected for such by the court. Track B is designed to reduce costs by accelerating milestones and limiting certain filing and discovery practices. These same concepts are expressed in many of the proposals of the pending patent reform legislation. The judiciary has been rather vocal on opposing the various proposals floating around Congress on issues of district court case management. While the goal of Track B is to resolve disputes sooner with less cost to litigants, the timing also suggests a deliberate amplification of the judiciary’s position.

To be sure, the proactive efforts of the judiciary to reduce time and expense of litigation are greatly welcomed, and the EDTX effort is to be applauded for taking the lead. Yet, based upon the dynamics of what is going on in the world of patent assertion post America Invents Act (AIA), the EDTX Track B docket could aid certain non-practicing entities that were only recently left for dead. Read the rest of this entry »

Amendment Missteps Before the PTAB

Posted On: Feb. 20, 2014   By: Scott A. McKeown
ptab-amendmentPatentees Fail to Adjust to Motion Practice

As final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings begin to issue from the USPTO’s Patent Trial & Appeal Board (PTAB), it is clear that patentees have yet to master the process of amending their patents in these new proceedings. The primary disconnect appears to be the failure of patentees to recognize that an amendment in a PTAB proceeding is proposed by motion; an amendment is not entered as a matter of right.

Unless prosecution has been closed in the examination of a patent application or patent reexamination, a patent applicant/patentee is free to present virtually any number and character of claim amendments supported by their specification. Outside of the prohibition against broadening, or amendments relating to a patentably distinct inventions, a patent applicant/patentee is not required to do much else but present their new claims for examination. On the other hand, a motion to amend before the PTAB requires the movant (i.e., patentee) to demonstrate entitlement to the requested relief. This demonstration requires more than most patentees are accustomed to providing the USPTO. Read the rest of this entry »