Scott McKeown

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AIPLA/USPTO Program to Focus on PTAB Trials & Ex Parte Appeals

On Wednesday June 15th the AIPLA & Patent Trial & Appeal Board (PTAB) will host their second annual Bench and Bar Conference.  A highlight of the program is the Tri-Judge Panel with Judge Jay Plager from the Federal Circuit, Judge Gregory Sleet from the District of Delaware, and former PTAB Chief Judge Nate Kelley.  For the ex parte appeals topic, an actual ex parte appeal argument will be heard live.  

The event will be webcast for those unable to attend in person (USPTO, Madison Auditorium). (register here) The program will be held from 1-5PM with a reception thereafter.  The current schedule is provided below.

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Continue Reading PTAB Bench & Bar Conference 6/15

Impact of Concluded PTAB Proceedings on Litigation

Patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court is left to make the ultimate resolution on validity.  Now several years into the PTAB’s existence, closed AIA trial records are being leveraged by the courts to resolve disputed issues of fact.  

Especially as to matters of claim scope, the PTAB’s expansion of the intrinsic record is providing courts with a short cut in assessing otherwise thorny factual determinations. Accused infringers are beginning to favorably leverage this record in related litigation—such as in a motion for summary judgment.   

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Continue Reading PTAB Trial Records Leveraged for Summary Judgement Wins

PTAB Moves to Establish More Precedential Decisions

Yesterday, the Patent Trial & Appeal Board (PTAB) announced the designation of five, additional precedential decisions.

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings. Previously designated as informative, this decision has been treated as de facto precedent for quite some time.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings. (Garmin for CBMs)

Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).  More specifically, this decision stands for the proposition that a dismissal of a prior law suit “without prejudice” prevents that suit from triggering the time bar of 315(b).  This has also been de facto precedent at the PTAB.
Continue Reading PTAB Designates Five Precedential Decisions

Vast Majority of Amendments Denied on the Merits

Yesterday the Patent Trial & Appeal Board (PTAB) released a study on motions to amend. Contrary to popular belief, the majority of these motions are not denied on strict procedural grounds, but instead, on the merits.

The study points out that:

  • In the 1539 trials that have gone to completion or settled (where joined or consolidated trials were counted as a single trial), motions to amend were sought in a little over 10% of cases, 192 in all. (34 more motions to amend are pending in currently open cases.)
  • Of those 192, not all ultimately required the PTAB to pass on the merits of the motion. This is because, often, motions to amend are filed as “contingent” motions—if the PTAB upholds the patentability of the original claims, such motions never get decided. Several other cases settle before motions to amend are decided. Additionally, some motions to “amend” only request the cancellation of claims, and those are routinely granted.  
  • 94 of the 118 remaining petitions were denied on merit based deficiencies, only 22 were bounced on procedural grounds.

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Continue Reading PTAB Releases Eye Opening Amendment Stats

Managing Intellectual Property (MIP) PTAB 2016

This coming Thursday May 12th, MIP will host its inaugural MIP PTAB Forum 2016 in New York City. The program includes several panels including Administrative Patent Judges (APJs) of the PTAB including Acting Chief Judge Nathan Kelley.  The agenda includes a range of topics including CAFC and district court…

Minor PTAB Rule Change & New 101 Guidelines

Last week, the PTAB issued a minor change to the AIA Trial Rules that became effective last Monday, May 2nd.  

The second sentence of § 42.24(a)(1) was changed to state that the word count or page limit does not include a table of contents, a table…

Full Commission Considers Impact of IPR FWD in Ongoing 337 Investigation

Back in December of 2014, the International Trade Commission (ITC) instituted an investigation at the behest of RealD. The complaint alleged violations of section 337 based upon the importation of certain three-dimensional cinema systems, and components thereof, that infringe certain claims of U.S. Patent Nos. 7,905,602 (“the ‘602 patent”), 7,857,455 (“the ‘455 patent”), 7,959,296 (“the ‘296 patent”), and 8,220,934 (“the ‘934 patent”).  MasterImage 3D, Inc. was the named respondent.

In October of 2014, MasterImage filed seven (7) IPRs against the asserted patents.  Five of these IPRs were denied institution, but two proceeded, one on the ‘934 and the other on the ‘455. Readers may be familiar with “MasterImage” based upon the informative decision on amendment practice.

Thereafter, on December 16, 2015, the presiding ALJ issued a final ID finding a violation of section 337 with respect to all but the ‘602 patent. The ALJ found that the asserted claims of each patent are infringed and not invalid or unenforceable. These findings were appealed to the full Commission. On February 16, 2016, the Commission determined to review the final ID in part and requested additional briefing from the parties on certain issues.  On April 14, 2016, MasterImage filed a letter, notifying the Commission that, on that same day, the USPTO’s Patent Trial and Appeal Board (PTAB) issued a Final Written Decision finding claims 1, 6-10, and 18-20 of the ‘934 patent unpatentable. 

So, now what?

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Continue Reading ITC Grapples with IPR Impact in Ongoing Investigation

Attached (here) is a transcript from Monday’s argument.  

My view is that the a majority of the Court was not buying Cuozzo’s key BRI arguments. Namely, his iterative amendment argument, and his adjudicative distinction. Most of the questions for the government seemed informational (on parallel tracks a patent dispute may take (Roberts)), as opposed to the disputed issues. While issues of policy are always part of a SCOTUS appeal, I don’t see them moving the needle here absent something more.  It was the “more” that will be the problem for Cuozzo..

Some notable exchanges:…
Continue Reading Cuozzo Argument : BRI Lives

BoardSide Chat Tuesday April 26th

Today the USPTO’s Patent Trial & Appeal Board (PTAB) will host a second April Boardside Chat webinar to address the new AIA trial rules.  The final rule package, goes into effect next week (May 2nd). The free webinar will be hosted by Lead Administrative Patent Judge (APJ) Mike Tierney.  The webinar will…