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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 Issues First Precedential Opinion of AIA Trials

Posted On: Jul. 31, 2014   By: Scott A. McKeown
PTAB-precedentialBoard Emphasizes DJ of Invalidity Prevents Later CBM Filing

The Patent Trial & Appeal Board (PTAB) issues three (3) types of opinions, routine, informative and precedential. The vast majority of PTAB decisions are routine, that is, decisions that are simply publicly available. These decisions may be cited for whatever persuasive value they may have but, as a general matter, routine opinions should be cited sparingly.

Informative decisions are those are not binding, but illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. Going forward, most designations from the PTAB Trial Section are likely to fall into this category.

Finally, precedential decisions are those that bind all PTAB judges unless the decision supported by the opinion is (1) modified by the Court of Appeals for the Federal Circuit, (2) inconsistent with a decision of the Supreme Court or the Court of Appeals for the Federal Circuit, (3) overruled by a subsequent expanded panel, or (4) overturned by statute. These decisions are relatively speaking, rare.

To date, while the trial section of the PTAB has processed hundreds of AIA opinions and orders, they had yet to designate one precedential, until today. Read the rest of this entry »

Petitioner Over-Reaching at the PTAB Results in Adverse Summary Judgment

Posted On: Jul. 30, 2014   By: Scott A. McKeown
inherencyStretching Prior Art Grounds Fatal to Petitioners

In district court, 102 grounds are highly preferred to even the strongest 103 ground. This is because of the uphill battle in demonstrating invalidity in a forum that not only applies a presumption of patent validity, but also requires clear and convincing evidence of invalidity. Obviousness just does not resonate with non-technical fact finders as well as anticipation. For this reason, patent challengers in the district court will often creatively argue 102 grounds on the basis of “inherency.”

Now that patent validity disputes are increasingly heading to the Patent Trial & Appeal Board (PTAB), challengers find themselves in a difficult situation. That is, where a 102 ground has been “stretched” in the co-pending litigation, for consistency, the same position is being advanced at the PTAB. This practice has led to some unfortunate results for those allowing their district court case to drive their PTAB strategy. Read the rest of this entry »

Reminder: PTAB to Host Lunch Webinar Tomorrow

Posted On: Jul. 28, 2014   By: Scott A. McKeown
ptoBriefing to Review Federal Register Notice Concerns

The Patent Trial and Appeal Board (PTAB) is hosting a free lunchtime webinar tomorrow from noon to 1 pm(EST) to discuss AIA trial proceedings. At the webinar, Acting Vice Chief Judge Scott Boalick, who heads the Trial Section of the Board, will discuss non-rule recommendations received from stakeholders during the recent round tables.  Judge Boalick also will address the 17 questions that the Board posed in the Federal Register Request for Comments.  There will be time for questions and comments during the webinar.

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 »

CAFC Reverses EDTX on Second Guessing of PTAB

Posted On: Jul. 11, 2014   By: Scott A. McKeown
CBM-stayEDTX Denial of CBM Stay Deemed Abuse of Discretion

Back in March I recounted the curious case of VirtualAgility Inc., v. Salesforce.com Inc., et al. (EDTX). In this dispute, Salesforce.com sought a stay of the EDTX litigation pending Covered Business Method (CBM) review of the VirtualAgility patent. The CBM petition was filed with the USPTO Patent Trial & Appeal Board (PTAB) on May 24, 2013 as CBM2013-00024.

The EDTX determined that a stay was unlikely to simplify the issues for trial based upon an independent assessment of the CBM. This was despite the fact that the PTAB went forward with the CBM (i.e., determined that all of the claims were more likely than not unpatentable on multiple grounds), and the patentee had already amended their claims. Thereafter the case was effectively stayed anyway pending interlocutory appeal to the CAFC (a right newly provided by the CBM statute). 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
parties?

Obviousness:
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?

General:
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).

Will CLS Bank Impact CBM Filings?

Posted On: Jun. 25, 2014   By: Scott A. McKeown
CLS-101Landmark 101 Ruling to Affect CBM Filing Strategies?

This time last year, I considered whether a negative outcome in CLS Bank v. Alice Corp might serve as a catalyst for 101 challenges at the USPTO’s Patent Trial & Appeal Board (PTAB). That is, with most Covered Business Method (CBM) challenges including 101 grounds, and some only including such grounds for fast-tracking purposes, whether the Decision might encourage a flood of such filings with the PTAB.

Since that time, the CAFC issued an unsatisfying divided opinion, and then last week, the Supreme Court of the United States finally decided the issue. Where does that leave us, and what has changed?

Please join me today, along with my authoritative panel for this special edition of the PatentsPostGrant.com webinar series. Together with my colleagues Michael Kiklis, author of the recently released treatise, “The Supreme Court on Patent Law,” and Stephen Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO, we will endeavor to explore the impact of this important ruling.

Click HERE to Register.