Scott McKeown

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Dissent Finds Burden of Unpatentability Rests with Petitioner for Amended Claims

Back in July, the USPTO’s Patent Trial & Appeal Board (PTAB) issued an informative decision in Masterimage 3D. Inc. v. RealD Inc. (IPR2015-00040) (here). In Masterimage, the Board explained that a patent owner moving to amend before the PTAB bears the burden of distinguishing its amended claims over prior art of record and also prior art known to the patent owner. In doing so the Board defined the scope of “prior art of record” and “prior art known to the patent owner.”  The Board defined prior art of record as:

     a. any material art in the prosecution history of the patent;
     b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and
     c. any material art of record in any other proceeding before the Office involving the patent.

Last week, in Prolitec, Inc., v. Scentair Technologies, Inc, the Federal Circuit considered whether this “prior art of record” burden was appropriate.
Continue Reading CAFC Debates PTAB Amendment Burden

Federal Circuit Reinforces Patent Rights as a Public Concern of a Regulatory Framework
The constitutionality of USPTO’s Inter Partes Review (IPR) mechanism has been challenged in a few district court cases over the past year. The challenge typically argues that the Patent Trial & Appeal Board (PTAB) cannot abrogate the jurisdiction of an Article III court in assessing patent validity, and/or that the PTAB prevents the 7th amendment right to a jury trial. I have largely refrained from discussing these recent cases as I found the arguments to be a bit too “creative.”  This is because the very same arguments failed decades ago when patent reexamination was first introduced in the 1980s.  Patlex Corp v. Mossinghoff (CAFC 1985)

The recent constitutionality arguments hoped to distinguish the earlier precedent on the basis that, unlike patent reexamination, which is examination based,  IPR is adjudicative.  I always found this position odd given that an unfavorable reexamination may be appealed to several adjudicative bodies, and IPR was a replacement for inter partes patent reexamination (which was also adversarial).

Today, in MCM Portfolio LLC v. Hewlett-Packard Company, the CAFC agreed, reinforcing the Patlex precedent of the 1980s.
Continue Reading CAFC Denies Strained Constitutionality Challenge to IPR Process

New Rejections Raised During Appeal by Patent Examiner?

Just a reminder that the USPTO Patent Trial & Appeal Board (PTAB) still does a lot of appeal work besides conducting AIA trial proceedings.

The PTAB has released guidance on responding to new grounds of rejection in an examiner’s answer.  The article reviews the Board Rules for…

Heightened Written Description Requirement for Negative Claim Limitations?

Negative patent claim limitations were once disfavored by the USPTO.  This is because defining claim scope by exclusion was considered less precise relative to more traditional, positive claim scope recitations.  Over the years, the USPTO has been guided to accept negative limitations as in some cases it may be the only way to adequately claim a given invention.  Yet, in assessing written description support for such claim features, the USPTO explains that “the mere absence of a positive recitation in a patent specification is not a basis for exclusion consistent with written description requirements.” MPEP 2173.05(i) 

In some cases, examiners have been known to require explicit support for a negative claim limitation. The degree of specification support necessary to support a negative claim limitation was analyzed last week by the Federal Circuit.
Continue Reading CAFC Weighs in on Negative Claim Limitation Support

New Declaration Evidence Proper If Rebutting Patentee Arguments to Trial Grounds

The Patent Trial & Appeal Board (PTAB) assesses the content of a patent challenger’s petition (in view of any patentee preliminary response) to determine whether or not to institute an AIA trial proceeding.  If trial is instituted, the Patentee may submit a Patentee Response together with any supporting testimonial evidence.  In most cases, the Patentee Response is the last Patentee response on the merits. Thereafter, the Petitioner, which has the burden of demonstrating unpatentability, is given the last substantive filing via its Petitioner Reply. A few months later, the oral hearing marks the conclusion of the formal trial schedule.

Since the Petitioner is provided with the last substantive response, a common dispute in AIA trial proceedings is the content of the Petitioner Reply.  That is, Patentee’s often argue that arguments or testimony of the Petitioner Reply are “new.”  This raises the question of whether or not the trial is limited to only that material present in the petition filing, or if it also encompasses rebuttal arguments, and more particularly, new rebuttal testimony of a declarant.

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Continue Reading CAFC Endorses Due Process of PTAB Trial Mechanics

Fee Setting Authority to be Exercised for FY 2017 (Oct. 2016)

In advance of the November 19, 2015 Patent Public Advisory Committee (PPAC) meeting, the USPTO has distributed its first fee change plan.  As a reminder, the agency was given fee setting authority under the America Invents Act, this is the first time that authority is being exercised.  The PPAC will provide input on the proposed fees (both patent and trademark) at its upcoming meeting.  Thereafter, the USPTO will issue a Federal Register Notice in January of 2016, with plans on a final notice of rulemaking, and implementation for fiscal year 2017 (October 1, 2016). 

Notable Patent Trial & Appeal Board (PTAB) fee increases include:

…
Continue Reading USPTO Proposes Hike in PTAB Fees for 2016

Secondary Indicia of Greater Value in Bio/Pharma

The submission of objective evidence of non-obviousness is rarely effective in the predictable arts (i.e., mechanical/electrical).  This is because such evidence must have a “nexus” to the claimed invention.  And, as the most common secondary indicia is “commercial success,” rarely do broadly drafted patent claim elements so cleanly coincide with sales results.  Long-felt but unsolved need is a further secondary consideration that is less prevalent in the predictable arts as it is in more traditional, laboratory driven industries.  Nexus is a significant hurdle in the predictable arts.

On the other hand, patent claims in the unpredictable arts, such as new drug formulations can have an especially compelling nexus to market appeal and unfilled need.  Where a drug is an improvement over existing formulations, or an altogether new treatment, commercial success and long, unmet need are easily tied to the specific formulations of the claims.  For this reason, secondary indicia of non-obviousness is a far more compelling rebuttal to a patentability challenge of the USPTO’s Patent Trial & Appeal Board (PTAB).

Given the modest, but growing rate of PTAB challenges in the unpredictable arts, petitioners should be wary of challenging especially popular drug formulations.
Continue Reading Secondary Considerations More Effective in Unpredictable Arts