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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

Nautilus Decision to Drive PGR and CBM Filings

Posted On: Jun. 3, 2014   By: Scott A. McKeown

nautilus-112

Decision Indirectly Highlights Value of Post-Grant Challenges

Yesterday, the Supreme Court decided that the Federal Circuit’s “insolubly ambiguous” framework for analyzing indefiniteness was, well…. indefinite.  In Nautilus Inc. v Biosig Instruments, Inc., the court found that “. . .the expressions “insolubly ambiguous” and “amenable to construction” permeate the Federal Circuit’s recent decisions concerning § 112, ¶2’s requirement.  We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass” (here). In reversing the decision of the CAFC, the case was remanded with instructions to consider a re-calibrated standard. That is, whether the claims when read in light of the specification and prosecution history fail to inform, with reasonable certainty, the scope of the claims to one of skill in the relevant art. The new test, as discussed at length in the decision, emphasizes a more fact intensive analysis.

As pointed out in footnote 10 of the decision, the parties dispute over the proper weight to be accorded the underlying proofs (i.e., clear and convincing, or not), and the degree of deference to a previous post-grant determination of the USPTO, were left for another day—That day may be just around the corner. Read the rest of this entry »

PTAB Popularity Undermines Push for Further Patent Reform

Posted On: May. 14, 2014   By: Scott A. McKeown
PTAB-filingsPatent Reform Has Been in the Hands of the Public Since September 2012

The last round of patent reform was enacted into law in 2011 as the America Invents Act (AIA). Along with the AIA came new patent challenge mechanisms that first became available to the public in September of 2012. These mechanisms have quickly increased in popularity and are only now disrupting the business of abusive patent litigation. For whatever reason, Congress has decided to forge ahead with new reform efforts despite the game changing impact of the AIA — an effort seemingly stalled at present. As Congress continues to debate the need for further patent reform, the impact of the AIA is becoming increasingly harder to ignore. That is, the public’s appetite for the low cost, post grant patent challenge proceedings of the AIA is surging, and the efficacy of these proceedings on assertion entities is impressive.

Since their initial availability in September of 2012, Read the rest of this entry »

PatentsPostGrant.com Webinar This Week!

Posted On: May. 12, 2014   By: Scott A. McKeown
post grant webinarMonthly Webinar Series Launches 5/15 (REMINDER SPACE IS FILLING UP!!)

I am pleased to announce that on Thursday, May 15th @12:30 (est) PatentsPostGrant.com will launch a free monthly webinar series directed to Patent Trial & Appeal Board (PTAB) practice. The webinar series will focus on practical insights and provide ample Q&A periods. The inaugural webinar is entitled:

Petition Tactics: Tailoring Your Petition to the Unique Audience, Your Non-infringement Case, and Evolving PTAB Realities. (Speakers are Greg Gardella and Scott McKeown).

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. CLE credit will be provided for major jurisdictions.

We’re looking forward to speaking with you during the webinar.

CAFC Sends Conflicting Messages to PTAB on Indefiniteness Standard

Posted On: May. 7, 2014   By: Scott A. McKeown
in re packardPre-Issuance vs. Post Issuance…PTAB Does Both

Yesterday, the CAFC explored the proper standard for a USPTO indefiniteness analysis in In re Packard (here). Given that the Supreme Court has taken up the other side of this debate in Nautilus v, Biosig Instruments Inc., namely, the proper standard for a district court indefiniteness analysis, the Court’s holding was very delicately crafted. In affirming the USPTO’s rejection under 35 U.S.C. § 112(b) the Court found the examiner showing under 112 (which is based on a requirement of clarity in claim drafting) demanded a persuasive rebuttal from the patentee. In the eyes of the Court, the patentee failed to meet the rebuttal burden, so the indefiniteness rejection was affirmed.

The concurring opinion went a step further and found that the USPTO standard of “clarity” was an even lower threshold than that debated in Nautilus. (i.e., “insolubly ambiguous” test vs. adopting an interpretation that comports with the understanding of one of skill in the art). This lowermost standard was endorsed by the concurring opinion in deference to the expert agency and their role in protecting the public notice function of patents.

Packard presents a clear distinction between the “pre-issuance” role of the USPTO relative to the “post-issuance” role of the courts. However, the vast majority of appeals headed to the CAFC in the years ahead will be post-issuance patent challenges lodged with the USPTO. What does In re Packard mean for post-grant patent practice at the Patent Trial & Appeal Board (PTAB)?

Read the rest of this entry »

PatentsPostGrant.com Launches Monthly Webinar Series

Posted On: May. 6, 2014   By: Scott A. McKeown
post grant webinarMonthly Webinar Series Launches 5/15

I am pleased to announce that on Thursday, May 15th @12:30 (est) PatentsPostGrant.com will launch a free monthly webinar series directed to Patent Trial & Appeal Board (PTAB) practice. The webinar series will focus on practical insights and provide ample Q&A periods. The inaugural webinar is entitled:

Petition Tactics: Tailoring Your Petition to the Unique Audience, Your Non-infringement Case, and Evolving PTAB Realities. (Speakers are Greg Gardella and Scott McKeown).

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. CLE credit will be provided for major jurisdictions.

We’re looking forward to speaking with you during the webinar.

Supreme Court Injects Octane to Further Fuel PTAB Demand

Posted On: May. 5, 2014   By: Scott A. McKeown
ptab octane fitnessPTAB Post Grant Patent Challenges to Help Demonstrate “Exceptional” Cases

Last week’s Supreme Court decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. broadened the “exceptional case” rubric used to determine when an award of attorney fees is appropriate in a district court patent dispute. On the same day, in Highmark Inc. v. Allcare Health Mgmt. Sys., the Court re-calibrated the level of deference the CAFC must accord to such determinations on appeal. It remains unclear if improving the odds of securing fees in a legal sense will translate to practical impact for patent litigants. That is, given the historic disinclination of district court judges to award fees, especially in certain plaintiff friendly jurisdictions, whether these decisions will really advance the needle for accused infringers. What is certain, however, is that accused infringers will be far more active in seeking such relief going forward, and may seek to creatively leverage PTAB patent challenge proceedings to support their case.

Can an ongoing PTAB proceeding help distinguish an “exceptional” case? Read the rest of this entry »

Octane Fitness To Spur Senate Patent Reform Bill?

Posted On: Apr. 29, 2014   By: Scott A. McKeown
Octane FitnessJudiciary Simplifies Patent Reform Debate…..Again

Although promised on Monday, the world still awaits the highly anticipated Senate patent reform bill. As pointed out previously, a major sticking point is the “fee shifting” (a.k.a. loser pays) aspect of the bill. The Senate has seemingly struggled to balance the needs of innovators that enforce patents with the need to rein in patent troll profiteering. That struggle may have been mooted today by the Supreme Court’s decision in Octane Fitness LLC v. Icon Health & Fitness, Inc. (here) Read the rest of this entry »

CAFC Shuts Down Attempts to Review PTAB Trial Determinations

Posted On: Apr. 25, 2014   By: Scott A. McKeown
CAFC IPR AppealStatutory Prohibition Against Appellate Review Of IPR Institution Decisions

Yesterday, in three separate decisions, the CAFC made clear that the grant/denial of an IPR by the Patent Trial & Appeal Board (PTAB) is not reviewable. The CAFC based their decisions on 35 U.S.C. § 314(d), which states:

No Appeal.— The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

The Court denied two writs of mandamus that challenged the PTAB decision to deny IPRs in Dominion Dealerhere) and grant IPRs (Proctor & Gamble (here). The CAFC also granted a motions to dismiss a pending appeals from a failed IPR petition filing (Volcano (here).

There seem to be two factors driving such “creative lawyering.” One, a failed IPR may leave a petitioner outside of the 12 month window with no option but the district court, and two, patentees subject to PTAB review are struggling mightily with the idea that no amount of legal maneuvering/theatrics can stall the speed of the PTAB.

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 »