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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

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 »

Prosecution History Before the PTAB….Your Mileage May Vary

Posted On: Feb. 18, 2014   By: Scott A. McKeown
Prosecution-historyThe Applicability of Prosecution History in a BRI Analysis

Whether in a new patent application or in an issued patent being subject to a post grant review proceeding, the USPTO utilizes a Broadest Reasonable Interpretation (BRI) standard for all patent claims. Under this one-size-fits-all standard a patent claim is construed consistent with the accompanying patent specification from the perspective of one skilled in the relevant art.

Although applied in post grant proceedings, BRI was developed as an examination expedient for patent examiners to protect the public notice function of newly minted patent claims. That is, since no property rights exist at the time of patent application, a pure BRI analysis properly ignores the developing intrinsic record as a guide to claim meaning (i.e., prosecution history) in favor of claim amendment practices. However, once an issued patent returns to the USPTO for a post grant analysis, consideration of prosecution history as intrinsic evidence is more of a mixed bag—especially when before examiners steeped in traditional BRI practices (e.g., reexamination, reissue, supplemental examination).

Recently, the Court of Appeals for the Federal Circuit (CAFC) has sent the USPTO Patent Trial & Appeal Board (PTAB) seemingly conflicting messages on the use of prosecution history during post grant proceedings.

Read the rest of this entry »

PTAB Explains Proper Role of Motions to Exclude

Posted On: Jan. 28, 2014   By: Scott A. McKeown
PTAB Rejects motion to excludeEarly Motions to Exclude as Improper

The Patent Trial & Appeal Board (PTAB) has begun issuing a steady stream of final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings. In these initial decisions, the Board is denying a significant number of improperly filed motions to exclude from both petitioners and patentees alike. Specifically, the Board is urging that a proper motion to exclude is not filed to: (1) challenge the sufficiency of the opposing parties evidence; (2) serve as a sur-reply; or (3) attack evidence raised in petitioner filings as being “new.” Instead, a proper motion to exclude must be keyed to an earlier made evidentiary objection.

While the PTAB is diligently educating the public on the proper motion practice in the initial wave of decisions, failure to heed the guidance in these initial decisions may result in attorney sanctions down the line. Read the rest of this entry »

Advanced Patent Law Institute

Posted On: Jan. 23, 2014   By: Scott A. McKeown
postgrantCLEPost Grant CLE Tomorrow at USPTO

Just a reminder that the 9th Annual Advanced Patent Law Institute is underway at the United States Patent & Trademark Office (USPTO. This two day program offers several post grant patent discussions tomorrow, including:  AIA Practice Tips Before the Patent Trial and Appeal Board; Post-Grant Proceedings, Strategies and Practice; and Ex Parte Reexam in View of Fresenius – A Hail Mary Pass Which Should Be in Every Playbook.

2014 Update on PTAB Trial Statistics

Posted On: Jan. 17, 2014   By: Scott A. McKeown
PTABStatistics Demonstrate Staggering Demand for PTAB Patent Challenge Proceedings

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 January 9, 2014 the Patent Trial & Appeal Board (PTAB) has received 810 IPR petitions and 108 CBM petitions, 922 petitions in total. Since the last update on November 7, 2013, the PTAB has seen 200 additional petition filings, quite impressive given the holiday season.

(Click to Enlarge)aia_pets_01_09_2014

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_tech_01_09_2014Although difficult to gauge from the numbers due to the lag in filing of preliminary responses across yearly boundaries, it seems that patent owner’s are beginning to appreciate the limited value of preliminary responses.  aia_PR_01_09_2014

aia_inst_01_09_2014

Based upon early numbers, the settlement 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)

2014 to Bring Significant PTAB Appeals to the CAFC

Posted On: Jan. 7, 2014   By: Scott A. McKeown

CAFC

USPTO Appeals to Grow for CAFC

In 2013 the patent-challenging public took notice of the USPTO’s Patent Trial & Appeal Board (PTAB) in a big way. With as many as 100 post-grant patent challenges being pursued per month at the PTAB, the unique considerations required to successfully navigate these proceedings from the PTAB on through to the Federal Circuit will become critical for patentees and third-party challengers alike.

Here is a link to my IP360 article on the topic, entitled 2 Fed. Circ. Rulings Will Impact PTAB Appeals In 2014.

PTAB Accelerates Post Grant Trial Schedules by Two Months

Posted On: Dec. 30, 2013   By: Scott A. McKeown
PTAB docketPTAB Begins Front Loading IPR & CBM Schedules

The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, an Inter Partes Review (IPR), Post Grant Review (PGR) or Covered Business Method (CBM) must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.”

For patentees faced with a PTAB post grant challenge it’s only getting worse. As of mid-December, the PTAB has accelerated trial schedules so that oral argument is scheduled a mere 7 months from trial institution. This is a full two months earlier than the previous default schedule. Read the rest of this entry »

CAFC Requests USPTO/Gov’t Weigh In On Third Party Standing for Appeals From PTAB

Posted On: Dec. 5, 2013   By: Scott A. McKeown
PTAB-standingCAFC Considers Article III Injury Requirement for Dissatisfied Patent Challengers

Earlier this week, the CAFC heard oral arguments in Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf). Although seemingly a routine appeal from an inter partes patent reexamination, the Court took interest in the unique procedural posture of this case a few weeks before argument on the merits. Here, the challenged claims of the patent were confirmed as patentable by the USPTO and appealed by the challenger, Consumer Watchdog, to the CAFC. The CAFC ordered late briefing on the question of Article III standing for CW’s appeal. CW brief (here), WARF brief (here)

For simple folk like me, the question of standing would seem to have a relatively straight forward response. That is, appeal from a PTAB decision is provided, by statute (old 35 U.S.C. § 315 (b)(1), to any party dissatisfied with a decision of the PTAB. This appeal right was actually added in 2002 as the original inter partes reexamination passed in 1999 had no such right. Section 13106 of Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002). So, not only was standing conveyed by Congress, it was conveyed only after denying it in the first legislative go-round. (fact pattern seems rather persuasive to me)

While the CAFC was well aware of the statute, they seemed to be seeking more of an “injury” from the appellant to convey Article II standing, or some kind of indication in the legislative history that Congress intended to convey Article III standing. Read the rest of this entry »

Are Strict PTAB Amendment Practices Inconsistent with Patentee Estoppel?

Posted On: Dec. 4, 2013   By: Scott A. McKeown
IPR_amendmentPatentees Squeezed Between Competing PTAB Rules

The rules of the new patentability trials of the America Invents Act (AIA) are designed to ensure timely resolution of patentability disputes within the statutorily mandated 12 month time frame. In particular, the Patent Trial & Appeal Board (PTAB) fashioned their new rules to prevent the notorious delays and complications of the previous inter partes patent reexamination system. One way in which the new AIA post grant proceedings are vastly different from the previous inter partes patent reexamination model is the manner in which claim amendments may be proposed.

In the previous inter partes reexamination system, any number of amended claims could be added or submitted prior to the close of prosecution before the examiner. There was no numerical limit on the number of claims that could be submitted. In fact, it was not uncommon practice for patentees to submit hundreds of new claims. By doing so, patentees made it more difficult for the third party to respond to all issues within their 30 day period, and within page limits. Likewise, the addition of such extensive amendments made examiner/APJ processing all the more tedious and time consuming.

In the new AIA proceedings, Inter Partes Review (IPR) and Post Grant Review, the PTAB provides for a reasonable number of substitute claims. 37 C.F.R. § 42.121/221. The “reasonable” aspect has been explained as a one-to-one correspondence in the typical case. Further restricting the ability to amend is the requirement that amendments be presented within the bounds of a 15 page motion to amend. The combination of these controls strictly limits the ability of patentees to amend in any significant regard, which greatly aids the agency in completing the proceedings in a timely manner.

Yet, patentees argue that these strictly enforced procedural controls are inconsistent with the patentee estoppel that attaches to a failed PTAB proceeding.

Read the rest of this entry »