• Subscribe

    Subscribe to the RSS feed Subscribe to the blogs's ATOM feed
    Add to your Google Home Page or Google Reader Add to your My Yahoo!
    Add to your My MSN Add to your My AOL
    Subscribe to the Comments RSS feed Add to your Bloglines
    Email Subscription



  • 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 ‘Stay or Dismissal of Litigation’ Category

Texas Court Explains PTAB Roadblock to Patent Litigation

Posted On: Dec. 3, 2013   By: Scott A. McKeown

ddc29c0373659346b925c74df98ea66b26792620

Texas Court Stuns Patent Troll Business Model

Texas has become well known, some would say infamous, for their patent friendly federal district courts. Over the years, “patent trolls” have increasingly flocked to Texas District Courts such as the eastern district (Marshall) to leverage these pro-patentee forums.

Since September 16, 2012, new USPTO post grant patent proceedings have been increasingly leveraged as the first true alternative to patent litigation. Here again, Texas courts offered patentees a benefit over many other districts in the U.S. That is, historically, Texas judges have been reluctant to stay litigation pending USPTO reexamination proceedings. To date, most presumed that this historical bias against staying litigation pending USPTO reexamination would continue despite the increase in speed in the new patent challenge proceedings of the America Invents Act (AIA). Yet, as made clear last week, the heightened standard necessary to institute an Inter Partes Review at the USPTO’s Patent Trial & Appeal Board (PTAB), coupled with the recent outcome in Fresenius USA v. Baxter Int’l. (CAFC 2013), has Texas courts rethinking the wisdom of their previous anti-stay stance. Read the rest of this entry »

PTAB Speed Changes Court’s Mind on Motion to Stay Calculus

Posted On: Sep. 11, 2013   By: Scott A. McKeown
PTAB-post grantCourt Cites Improved Speed of PTAB as Eliminating Potential Prejudice

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.

As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6+year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).

Previously, when an inter partes or ex parte patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were that the significant USPTO delay would prove prejudicial to the plaintiff…not any more. Read the rest of this entry »

Stays Pending USPTO Review to Increase as a Result of Speedier AIA Options

Posted On: Apr. 29, 2013   By: Scott A. McKeown
Stay pending post grantIncreased Speed and Heightened Threshold Showing for New PTAB Proceedings Drive Stays

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.

As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6+year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).

Previously, when an inter partes patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were that the significant USPTO delay would prove prejudicial to the plaintiff. Indeed, some of the cases stayed in the early days of inter partes reexamination are only now being reopened, 8 years later.  Read the rest of this entry »

New Jersey Solves Patent Troll Problem

Posted On: Mar. 28, 2013   By: Scott A. McKeown
new jersey patent suitsLiberal Stay Policy Thwarts Patent Suits in New Jersey

Non-practicing entities or “patent trolls” are generally those plaintiffs that seek to enforce patent rights against an industry in which they themselves do not compete. Stated another way, an NPE’s only business is patent litigation.

Often times the patents an NPE is enforcing were purchased from a traditional technology company for the sole purpose of exacting royalties from the relevant industry. In the hands of an NPE, which has no technological industry subject to a patent counter suit by their industry targets, the NPE patents become especially powerful weapons of economic coercion.

Over the last decade, law firms have recognized the efficacy of NPE litigation campaigns and have signed on in great numbers to get a piece of the action. Typically, an NPE will team up with a law firm that will conduct the campaign on their behalf in exchange for a contingent fee arrangement. (i.e., percentage of the collected settlements). This profiteerring business model has lead to a significant proliferation of patent infringement suits.

Just not in New Jersey. Read the rest of this entry »

Stay of Litigation Pending USPTO Review Now a Much Easier Call for Judiciary

Posted On: Mar. 14, 2013   By: Scott A. McKeown
Stay pending post grantIncreased Speed and Heightened Threshold Showing for New PTAB Proceedings Drive Stays

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.

As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6 year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).

Previously, when a patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were: (1) the significant USPTO delay would prove prejudicial to the plaintiff; and (2) the SNQ standard of patent reexamination led to a 97% grant rate—both of these arguments are now falling very flat. Read the rest of this entry »

AIA Post Grant Proceedings Begin to Impact NPE Assertions

Posted On: Dec. 27, 2012   By: Scott A. McKeown
PTABRippling Effect of PTAB Proceedings to Upset Patent Litigation Business Model?

Opponents of the U.S. patent system are quick to deride the America Invents Act (AIA) as a failure when it comes to the so called “patent troll” or “non-practicing entity” (NPE) problem. Indeed, a steady stream of news articles from otherwise reliable sources such as the Wall Street Journal only serve to sensationalize and reinforce this misperception. Most such articles will focus on what has happened prior to September 16, 2012 (i.e., failure of the joinder rules) as opposed to what is now happening as a result of the AIA.

On September 16th, 2012 the new post grant patent proceedings of the America Invents Act (AIA) became available to patent challengers for the first time. These proceedings have only been available for a few months, but allow challenges to suspect patents of any vintage in a far more speedier, cost effective, and challenger friendly manner relative to that of the federal district courts. The idea behind these proceedings is that for the very first time, there will be a true, accelerated alternative to patent litigation. Not surprisingly, there has been a robust demand for these proceedings with over 100 petitions filed in the first few months—many of which target NPE portfolios. The new post grant proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) will conclude in a fast enough time (12-18 months) to transform the existing litigation landscape in a manner that will significantly undermine the NPE patent litigation business model.

The impact of these new, AIA post grant proceedings are only now beginning to be felt in the district courts. Read the rest of this entry »

CRU Workload Extending Patent Reexamination Pendency?

Posted On: Nov. 7, 2012   By: Scott A. McKeown
CRU_backlogReexamination Filing Surge Dismissed as Speculative

Back in September, I explained that the USPTO received an unprecedented number of reexamination filings in the closing days before the September 16th. This surge was a result of several factors: First, the fee for ex parte patent examination was jumping from $2520 to $17,500 as of the 16th;  and, as a result of the one year anniversary of enactment of the America Invents Act (AIA) on the 16th, September 15th was the last day to file a request for inter partes patent reexamination.

Currently, the Central Reexamination Unit (CRU) is working through the bolus of filings, still trying to get them all docketed and reviewed within the 90 day statutory period. Seizing upon this influx of work, a Patentee recently argued against staying their district court proceeding pending inter partes patent reexamination — arguing that the USPTO process would now be much slower.

Read the rest of this entry »

New Post Grant Patent Trials To Derail Parallel ITC Actions?

Posted On: Jun. 7, 2012   By: Scott A. McKeown
stay-ITCCongress Mandates Speed, Extends Stautory Estoppel to ITC

The new post grant patent trials of the America Invents Act (AIA) are designed to provide a true alternative to patent litigation. That is to say, current patent reexamination proceedings are typically pending 4-5 years through appeal, if not longer. As a result, patent reexamination is primarily utilized as an additional litigation tool rather than the alternative to patent litigation intended by Congress. Conversely, the new AIA trial proceedings are designed to conclude, by statute, within 12-18 months of initiation.

Whether, choosing Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), or Inter Partes Review (IPR), the new proceedings will conclude relatively promptly, and estoppel will attach upon a written determination of the Patent Trial and Appeal Board (PTAB). Based on the increased speed, and estoppel result, it is expected that the new proceedings will provide a compelling basis to stay parallel infringement actions.

However, the International Trade Commission (ITC) also has a statutory mandate for expeditiously processing their docket (typically within 15 months). For this reason, the ITC is currently an “anti-stay” forum. Given the likelihood of future parallel tracks of the USPTO and ITC, will the ITC change their “anti-stay” practice to account for the post-AIA world? Read the rest of this entry »

ITC Action to Continue Despite Advancing USPTO Reexamination

Posted On: Apr. 19, 2012   By: Scott A. McKeown
itc-stayITC Mandate Provides Safe Haven for Troll Abuse?

With injunctions harder to come by, and some district courts staying proceedings upon the mere filing of a patent reexamination, it is not surprising that non-practicing entities (NPEs) have been heading to the ITC (and, in the process testing the domestic industry requirement). To date, the ITC mandate to expeditiously adjudicate 337 actions has led to relatively few stays pending reexamination. In some cases, stays have been entered and later reversed by the full Commission. (See Tessera Decision here). This is a further benefit for NPEs.

Recently, a motion to stay an ITC proceeding pending patent reexamination was again considered by the agency in Certain Blue Ray Disc Players. Read the rest of this entry »

AIA Changes to Greatly Increase Stays of District Court Actions?

Posted On: Mar. 28, 2012   By: Scott A. McKeown
Stay pending post grantSpeedy, One Sided Estoppel to Force Judicial Deference

The estoppel provisions of Post Grant Review (PGR) and Inter Partes Review (IPR) are markedly different than those in existence today for Inter Partes Reexamination (IPX). Most importantly, PGR/IPR estoppel attaches upon a written determination of the PTAB, and a final, non-appealable decision of a court will not force the USPTO to vacate a parallel IPR/PGR proceeding. These estoppel features are expected to be a significant driver going forward in motions to stay parallel infringement actions.

Currently, IPX requires all appeals to be exhausted before estoppel can attach. In practice, this means that there is (roughly speaking) a 6 year journey through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). Starting September 16 2012, IPX will be replaced with IPR. Estoppel in an IPR proceeding will be effective within 12-18 months from the initiation of the proceeding. This is because IPR/PGR proceedings must be concluded in this time frame by statutory mandate.

The speed of IPR/PGR proceedings relative to court proceedings will certainly undermine plaintiff oppositions to a motion to stay. Often times, the strongest plaintiff argument in opposing a stay is that the significant USPTO delay will be prejudicial to the plaintiff.  However, perhaps more compelling will be the shifting of the prejudice argument to the side of the defendant. Read the rest of this entry »