Scott McKeown

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Expert Agency Need Not Accept Expert Testimony

AIA trial practices of the Patent Trial & Appeal Board (PTAB) are often analogized to that of the district courts. Yet, in practice, there are more differences than similarities between the two. The PTAB, unlike the district courts, is an expert agency. For this reason, its decisions are reviewed on the substantial evidence standard of the Administrative Procedure Act (APA). 5 U.S.C. § 706. Further the PTAB applies the preponderance of the evidence evidentiary standard, which stands in stark contrast to the clear and convincing standard of the district court.  Taken together, these two foundational differences are worlds apart from district court trial practices, and, serve as the primary drivers behind the appeal of the PTAB to patent challengers.

Counsel more accustomed to the favorable patentee standards of the district courts, often times find themselves struggling with the seemingly bizarro world of PTAB administrative trials— such as the agency’s ability to disregard expert testimony that would be given weight in the district courts.
Continue Reading CAFC Explains PTAB Expertise & Its Role In IPR Fact Finding

CAFC Decision Faults 103 Analysis on Reviewability Grounds

Last week, in In re Nuvasive, the Federal Circuit vacated the PTAB’s Final Written Decision from IPR2013-0056 involving Medtronic, Inc and NuVasive, Inc. (“NuVasive”) and remanded the case “for additional findings and explanations regarding the PHOSITA’s motivation to combine the prior art references.”  (2015-1670, at 13 (Dec. 7, 2016)).

But this case isn’t so much about about the law of obviousness but the adequacy of the appellate record under the Administrative Procedure Act (APA).

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Continue Reading CAFC Faults IPR Record on APA Grounds

PTAB Specific Webinars Offered by USPTO

The full slate of 2017 Boardside Chat webinars have been announced for 2017. The BoardSide Chat series is a bi-monthly webinar that is free to the public. As with past webinars, the Board will share updates on topics related to ex parte appeals and AIA trials. There will be time during each webinar for audience questions and feedback.

Please see the schedule below:…
Continue Reading PTAB BoardSide Chats for 2017

Patent Examiners Leverage AIA Trial Data

Back in April, the USPTO launched the Post Grant Outcomes Pilot, which focused on pending patent applications that are related to patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). The agency now reports that the Post Grant Outcomes Pilot has succeeded in making examiners aware of trials related to applications they are examining, and in turn has facilitated the timely and effective examination of applications.

The idea behind the program is that AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.

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Continue Reading Related Applications & PTAB Trials: Post-Grant Pilot Results

“Incidental to” or “Complementary to” Financial Products/Services is Not Enough

Since 2012, the Patent Trial & Appeal Board (PTAB) has reined in its definition of a covered business method (CBM) patent under Section 18 of the AIA. In early CBM decisions, it was enough for the patent specification to reference some incidental or complimentary financial service aspect for the PTAB to find CBM eligibility. Since those early decisions, the PTAB has recalibrated its CBM eligibility analysis. Today, the Board increasingly seeks out claim language explicitly related to financial transactions/services. 

Yesterday, in Unwired Planet, LLC v. Google Inc., (here) the Federal Circuit had occasion to consider CBM eligibility in the context of one of those earlier PTAB decisions. In Unwired, the CAFC rejected the specification-based analysis, a decision that is sure to reverberate across pending CBM appeals of the same vintage now before the Federal Circuit.
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Continue Reading CAFC Defines Outer Boundaries of CBM Eligibility

Court Questions Reasoning in Achates Publishing

Today, in Click-To-Call Techs. v. Oracle Corp., (here) the Federal Circuit reconsidered its earlier decision (GVR Order) in light of the 35 U.S.C. § 314(d) discussion in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).  In its earlier Click-to-Call decision, the Court found that issues arising under 35 U.S.C. § 315(b) (i.e,, one year time bar) could not be appealed, pursuant to 314(d).  In today’s non-precedential decision, the Court found that it could not reverse its earlier ruling since it was bound by its own precedent to the contrary.

However, the viability of the precedent was called into serious question.

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Continue Reading CAFC Invites En Banc Review of IPR Appeal Bar

Dispute Over AIA Trial Institution Practices …Be Careful What You Wish For

Since the advent of AIA trials, opponents of the system have attempted to unravel them.  First, BRI was challenged, then 7th amendment constitutionality, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.  

As previously discussed, SAS challenged all sixteen claims of ComplementSoft’s patent 7,110,936 in inter partes review (IPR). Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the CAFC, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a); the Federal Circuit disagreed (Judge Newman dissenting).

If it were agreed that the statute “at least one claim” is in conflict with the rule (perhaps on eventual appeal to the SCOTUS) is this really something petitioners or patentees should want?  

Probably not.
Continue Reading Are Partial AIA Trial Institutions a Good Thing?

New 101 Guidance Addresses Recent CAFC Decisions

Today, the USPTO issued a memorandum entitled “Recent Subject Matter Eligibility Decisions.” (here).  The memo  provides a discussion of two recent CAFC decisions identifying eligible subject matter, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016)…

USPTO Revisits 2011 Rule Proposal (Rules 56(a) &555(a))

In the wake of the Federal Circuit’s 2011 decision in Therasense Inc. v. Becton Dickinson and Co., the USPTO quickly moved to revise the Duty of Disclosure to align with the Court’s new, but-for materiality standard—perhaps too quickly.  The 2011 proposal sought to update the relevant rules (1.56 and 1.555) by explicitly adding a short hand, reference to the Therasense case itself. The earlier proposal also intertwined the the “egregious conduct” exception of the Therasense holding (Duty of Candor & Good Faith) with the Duty of Disclosure.

At the time, I questioned whether it was unnecessarily confusing to mix together concepts of conduct and disclosure given the agency’s historical segregation of such. Others found it odd that the rule would reference the name of the case as opposed to spelling out the “but-for” materiality standard of its holding.
Today, the USPTO has revisited this earlier proposal, and issued a new proposal.  

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Continue Reading USPTO to Adjust Duty of Disclosure to Align With Therasense