Scott McKeown

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Patent Act Rewritten to Appease Bio/Pharma Lobby

In a surprising change of course, the Senate bill known as the ‘The Patent Act” (S.1137) has morphed into a PTAB reform bill. The initial version of the Bill hardly touched the patentability trials of the USPTO’s Patent Trial & Appeal Board (PTAB). A competing bill, known as the “Strong Act,” — on the other hand— proposed gutting these highly effective patent challenge mechanisms.  After the Manager’s Amendment to the Patent Act on Tuesday (here), at least with respect to the PTAB, both bills now propose significant alterations to the PTAB’s patent challenge mechanisms.

As a reminder, the impetus behind the AIA of 2011 was to thwart abusive litigation fueled by weak patents. It was argued pre-AIA that patents were issuing from the USPTO of overly broad scope and on questionable technology. These patents were then used as tools by extortionists (patent trolls) to extract large settlements from the domestic tech industry. This cottage industry was spawned from an over abundance of such patents. And, since defeating these patents in a district court was quite difficult (due to the deferential treatment of U.S. patents) and expensive, settlement was the only option. The AIA provided relief from these practices by introducing a low-cost, expedited “opposition” to such patents at the PTAB known as Inter Partes Review (IPR) and Post-Grant Review (PGR). That is, the PTAB challenge proceedings of the AIA were designed to weed out weak patents, quickly and cost effectively. These proceedings have been very effective to the delight of some of America’s largest tech companies (i.e., serial defendants).  

Since enactment of the AIA, however, many have realized that when presented with appropriate evidence, the PTAB does not discriminate.  It is not just weak troll patents that are being cancelled, and this has a bunch of folks, especially the Bio/Pharma lobby, up in arms.

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Continue Reading Senate Moves to Derail Gains of America Invents Act

June Boardside Chat on AIA Discovery

The USPTO’s Patent Trial & Appeal Board (PTAB) will host its third  “Boardside Chat” lunch webinar for 2015 today from noon to 1PM. The topic is “Discovery in AIA Trials.”  I will be participating on the the practitioner panel. 

Dial-in is as follows:
Webcast Instructions…

First Hedge Fund IPR Ready for PTAB Institution Decision

Earlier this week, Acorda Therapeutics filed its response to the first of the now notorious hedge fund IPR filings in (IPR2015-00720). In its response (here), Acorda points out that unnamed investors are directly funding the filing, yet remain unknown to the public despite the requirements to list all real-parties-in-interest.  Acorda also points out the profiteering nature of the filing as a means to influence the price per share of publicly traded stocks, which is inconsistent with the PTAB’s congressional mandate.

Since the first round of hedge fund filings, the same entities have filed upward of 15 IPRs. Additional copycat IPR filings have followed from other hedge funds. Meanwhile, the demand for the PTAB’s limited resources remains at an all time high from parties with legitimate patent disputes. 

As I have pointed out previously, independent of the RPI issue, the Board has the power to shut down this burgeoning avenue of abuse, and should do so quickly (a decision is not due until 8/26).  While Congress is poised to quickly provide a statutory control to cut off this chicanery, the public would be far better off if the PTAB exercised its discretion. Such decisive action by the agency would avoid the unintended consequences that would certainly follow the current legislative proposals. 

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Continue Reading First Hedge Fund Filing Moves to PTAB Decision

June/July PTAB CLE

The USPTO’s Patent Trial & Appeal Board (PTAB) will host its third  “Boardside Chat” lunch webinar on Tuesday June 2nd from noon to 1PM. This month’s chat will focus on “Discovery in AIA Trials.”  I will be speaking on the practitioner panel.  Registration information for this program is available at the above link.

The PTAB’s bi-monthly chat program updates the public oncurrent Board activities and initiatives. The full schedule is listed at the end of this post, including links to past chats.
An interesting option for those tracking legislative efforts will be

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Continue Reading PTAB Boardside Chats & More for June of 2015

Today’s Federal Register Notice provides the long awaited “quick-fix” rule changes. The rules codify the changes announced on Director Lee’s March 27th blog post, which provided for the use of a claim appendix in Motions to Amend, expanded page limits for such Motions, and expanded page limits for Petitioner Replies.

The final rules (…

CAFC Decides Patent Reissue was Improperly Broadened Based on Previous Markman Definition

Yesterday, in ArcelorMittal France v. AK Steel Corp. (CAFC 2015), the CAFC considered the impact of a reissue of U.S. Patent 6,296,805 on a previous appeal decision.  The ‘805 patent, directed to rolled steel, recited the claim limitation “very high mechanical resistance.”  In an earlier infringement suit between the parties, the district court found this terminology to define “a tensile strength greater than 1500 MPa.” This construction was upheld by the CAFC on appeal, and the case as remanded as to other issues.

During the appeal of the claim construction, Patentee reissued the ‘805 patent as reissue patent RE44,153.  The reissue patent included a new claim, claim 23, that recited “mechanical resistance in excess of 1000MPa.”  The originally construed claims remained in the reissue patent. Once back in the district court, Patentee amended its complaint to include claim 23 of the new reissue patent.  Thereafter, on summary judgement, the district court ruled the reissue patent invalid for improper broadening. In the second appeal, decided yesterday, the CAFC agreed that claim 23 of the ‘153 reissue was improperly broadened.  

Ostensibly, the USPTO did not consider 1000MPa limitation as broadening relative to the specification of the ‘805 patent.  On the other hand, the CAFC found  “greater than 1000MPa” to be broadening based upon the district court’s previous construction that the scope of “very high mechanical resistance” was greater than 1500MPa. This difference in construction highlights the potential incongruity between USPTO and district court claim construction practices.

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Continue Reading Patent Reissue Breadth Anchored to Previous Markman Construction

Board Updates Public on Manner of Designating Expanded Panel

As the Patent Trial & Appeal Board (PTAB) is now issuing an increasing number of Final Written Decisions (FWD) in addition to Institution Decisions, it is, not surprisingly, experiencing an increasing number of Requests for Rehearing. Many such Requests are seeking expanded panel review.  To date, the Board has issued expanded panel decisions in a small handful of cases directed to fundamental questions of law and AIA trial practice. For example, expanded panels were used in Target Corp. v. Destination Maternity Corp., (IPR2014-00508), which was expanded twice to explore issue joinder authority of 35 U.S.C. §315(c), and Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case (IPR2014-00319) to explore 35 U.S.C. §315(b). Since these decisions, parties seeking rehearing have been asking for the same expanded panel treatment.

Last Friday the PTAB issued two informative decisions, which make clear that designation of an expanded panel is not by party request, but rather, and internal decision of the Board.

The intent of these informative decisions is clearly to eliminate such requests going forward.  However, it seems likely that such requests, or “suggestions”  will likely persist in one form or another.

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Continue Reading PTAB Expanded Panels Are Not by Party Request

New Decision Explores 315(e)(1) Estoppel

Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative Orders, Decisions, and Notices on its web page. (here)

The decision, like many recent representative decisions is rather straightforward. In this decision, the Board held that the Petitioner is estopped under 35 U.S.C. § 315(e)(1) from requesting inter partes review because: (1) the Petitioner was the same petitioner as in a prior proceeding; (2) the patent and claims challenged in both cases are the same; and (3) the prior art raised in the second petition and in the prior proceeding are the same. (The petitioner used the same prior art in a different combination to allege obviousness of the claimed subject matter). The decision held that the art of the second filing not only “could have been raised” in the first filing, but , in fact, was raised.

As discussed during yesterday’s PatentsPostgrant.com webinar, the application of the “could have raised” standard in the estoppel context is required by statute. On the other hand, applying the “could have raised” standard outside of 315(e)(1) situations, such as to a follow-on petition that is not subject to estoppel is becoming worrisome for many filers.

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Continue Reading PTAB Considers “Could Have Been Raised” Estoppel