Scott McKeown

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Second Pilot Directed to Small & Micro Entities

Back in June, the PTAB began a pilot program to allow appellants with multiple ex parte appeals pending before the Board to expedite review of one appeal in return for withdrawing another. The stated purpose of the Expedited Patent Appeal Pilot is to allow appellants with multiple, pending ex parte appeals (i.e., large patent filers) to have greater control over the priority with which their appeals are decided.  This pilot is also hoping to reduce the backlog of appeals pending before the Board.  

When introduced, I noted that I could not imagine independent inventors being thrilled with a program that allows large filers a slightly faster path to a Board decision.

Fortunately, the agency has now introduced a second pilot directed to small and micro entities.

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Continue Reading Second Pilot Announced to Expedite Ex Parte PTAB Appeals

PTAB Practice, Influence on Patent Prosecution & Patent Policy on Tap for Fall 2015

For those seeking PTAB related Education/CLE this fall, there are quite a few upcoming options.

Starting next week, September 16th, the Giles S. Rich American Inn of Court will be hosting its first meeting of the year at the Court of…

Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims?

Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 (here).  While an affirmance is typically good news for the agency, going forward, the Court’s decision may create an unexpected headache for both the Board and USPTO Examining Corps.
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Continue Reading CAFC Finds Prior Art Status of Patent Depends on Claim Scope?

Patents in the Unpredictable Arts No Easy IPR Mark

Back in January of last year Kyle Bass introduced himself to the patent community through a series of brash, public pronouncements on a perceived lack of quality in drug patents. His stated intention was to “knee cap” drug companies by leveraging Inter Partes Review at the Patent Trial & Appeal Board (PTAB) to cancel, in his view, improvidently granted patents. My reaction to those pronouncements was to predict that it would be Mr. Bass that would be “knee capped” as invalidating patents in the unpredictable arts is easier said than done. This is because there is already a significant interest in cancelling such patents from a highly sophisticated generics industry.  If defeating such patents were that easy, generics would already be on it. For this reason, the vast majority of patents sucessfully challenged at the PTAB are in the predictable arts (i.e., electrical and/or mechanical).

Since that time, Mr. Bass has seen his first two IPR filings denied by the PTAB on technical grounds. (failure to prove public accessibility of the underlying prior art references). Earlier this week, the Board denied the third Bass filing on the merits. In this filing, Mr. Bass and friends took on a method of treating multiple sclerosis as claimed Biogen’s U.S. patent 8,399,514. In its decision, the PTAB essentially explained to Mr.Bass that an obviousness analysis, in the unpredictable arts, requires far more than an “obvious to try” rationale. (here).

Given his 0-3 record, and the impending sanction orders against Mr. Bass in his remaining IPR proceedings, the outlook is quite negative for this investment vehicle.
Continue Reading Kyle Bass Now 0-3 at PTAB With More Pain to Come

USPTO Releases Petition Timelines

The Office of Petitions has launched a new USPTO Patents Petitions Timeline that provides information on petition types that can be filed throughout each stage of the patent prosecution, and reexamination process. For each petition type, users can easily access information on average pendency over the past 12 months of decided petitions, the deciding office, petition grant rates, and link to specific sections of the Manual of Patent Examining Procedure (MPEP) or other parts of the USPTO website that relate to each petition type. (here)

Given the pro forma nature of many prosecution related petitions, of most interest are the more unusual filings, such as petitions to revive abandoned applications.

Of perhaps the greatest interest is the pendency information pertaining to petitions filed during patent reexamination. I have often referred to this practice as the “black arts” as such practice is fraught with uncertainty, and pendency can be quite significant.
Continue Reading Pendency Statistics on Petitions Filed During Patent Reexamination

Pilot Program to Limit APJ Review For IPR Institution

As promised in last week’s rule package, a second Federal Register Notice (here) has issued from the USPTO’s Patent Trial & Appeal Board (PTAB). This Notice, entitled: Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews, proposes to select IPR petitions for inclusion in a pilot program whereby only a single Administrative Patent Judge (APJ) decides the petition (CBM and PGR are excluded). Currently, three APJs review IPR petitions prior to instituting an AIA trial. However, three judges are only statutorily required for trial, not institution.  So, the PTAB is exploring ways to become more efficient in view of its growing workload.
Continue Reading PTAB Considers Single Judge Pilot Program

Kyle Bass & Friends Swing and Miss in First Two Attempts at IPR

Today, the Patent Trial & Appeal Board (PTAB) denied institution of IPR 2015-00720 and IPR2015-00817 (here and here). These IPR petitions, targeting U.S. Patents 8,663,685 and 8,007,826 of Accorda Therapeutics, were advanced by the so-called “Coalition For Affordable Drugs.”  The Coalition, more widely recognized as a creation of hedge fund manager Kyle Bass, has filed 20+ petitions in the past few months against various drug patents. 

These PTAB denials are likely the first in a long series of disappointments for the Coalition.
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Continue Reading First Two Hedge Fund IPRs Fail

PTAB + Octane Fitness = Problem

Back in 2014, I explained that the recent shift in exceptional case analysis under Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Mgmt. Sys., would provide opportunity for successful Patent Trial & Appeal Board (PTAB) petitioners. This is because accused infringers are universally embracing PTAB proceedings as an alternative to high cost litigation, and, are increasingly seeking fees after Octane.

Last week, the Southern District of California awarded fees of roughly $400k to a successful USPTO patent challenger in Deep Sky Software, Inc. v. Southwest Airlines Co., 3-10-cv-01234 (CASD).

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Continue Reading Plaintiffs Beware: PTAB Fee Awards Might Be Headed Your Way

Software Partnership Meeting October 21st

The United States Patent and Trademark Office (USPTO) has announced that the Software Partnership has joined with Partnering in Patents for the next meeting on October 21, 2015 at the main USPTO campus in Alexandria, VA  (register). The meeting is an all-day event including a morning interactive focus…