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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 ‘Post-Grant Review’ Category

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.

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.

Is Branded Bio/Pharma Adequately Preparing for the PTAB?

Bio/Pharma Patentee Challenges AheadPTAB-pharma

As discussed last week, the USPTO’s Patent Trial & Appeal Board (PTAB) offers significant benefits to generic drug companies seeking to enter the market of a branded competitor. That is, the PTAB offers a short circuit to expensive district court litigation for challenging high value drug patents.

In addition to the proceedings discussed last week, three recent PTAB decisions involving DNA sequencing patents owned by the Trustees of Columbia University in the City of New York, the PTAB cancelled all challenged claims in the three patents, IPR2012-0006 and 00007 and IPR2013-00011. While not technically drug patents, their fate is indicative of what the drug industry faces in PTAB challenges.  Read the rest of this entry »

Generic Pharma Leverages PTAB

pharma patentsIPRs and Drug Litigation

Since Post Grant Review (PGR) is designed to challenge patents on 112 and 101 grounds not available in Inter Partes Review (IPR), it is often assumed that Bio/Pharma is somewhat unconcerned with the growing trend to challenge patents in IPR at the PTAB. Today, my partner Richard Kelly and I explain that ethical drug companies are in fact very concerned with IPR.

The generic drug industry enjoyed a run of almost 20 years of enormous profits from the 180 day exclusivity period granted to the first ANDA file under the Hatch-Waxman Act —  this all changed in 2003. In response to perceived abuses, The Medicare Prescription Drug Improvement and Modernization Act became law in 2003. One unintended consequence of the act was that most exclusivity periods became shared. That is more than one generic company received the right to sell during 180 day exclusivity period.

The impact on the generic industry’s profitability has been marked. First, if there is only one generic, it has been estimated that the generic company will receive about 94% of the ethical company’s wholesale price and will capture 80% or more of the ethical drug company’s market volume. In contrast, with a shared exclusivity between two competitors, only 52% of the ethical company’s price is captured, at 9 competitors only 20%, but still collectively capturing about 80% or more of the ethical company’s volume. In the recent Crestor litigation, 9 companies are eligible for the 180 day shared exclusivity. This changes the economics of drug patent litigation tremendously. No longer can generic companies afford to pay $10 million or more in legal fees to challenge a drug patent listed in the FDA Orange Book. Like many patent challengers the generics are looking to cut litigation costs — enter the PTAB. Read the rest of this entry »

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 »