Scott McKeown

Subscribe to Scott McKeown's Posts
Contact:Read more about Scott McKeown

Page Limit Changes Effective Immediately for All AIA Trial Filings

The USPTO’s Patent Trial & Appeal Board (PTAB) has announced some of their “quick fix” rule changes today in advance of the anticipated Federal Register Notice.  In addition to expected changes to page limits, the Director also mentioned other changes that may be proposed through typical notice & comment rule making later this year.  The immediate changes are directed to page limits, including:

Page Limits
-Motions to Amend are now limited to 25 pages (formerly 15 pages), and the claims may be attached as an appendix.
-Petitioner Reply Briefs are now limited to 25 pages (formerly 15 pages)

Later this year, more significant changes will be proposed, but are unlikely to be finalized until 2016, including:

…
Continue Reading PTAB Moves Forward on Quick-Fix Rule Changes

Should Systemic Changes to The Patent System Be Undertaken in Response to Bad Actors?

Efforts to enact patent reform (as well as the America Invents Act of 2011) are/were largely driven by the perception that the patent system is being abused by bad actors. Currently, many of the most established technology companies in the world are routinely sued for patent infringement by small/medium sized patent holders. The larger, established targets of these lawsuits consider these smallish companies “patent trolls.” They insist that the current legal system is enabling trolls to inflict legal expense as a form of extortion in exchange for license payments. On the other side of the equation is the small/medium sized patent holders that claim the present system is necessary to ensure a fair shake for all innovators, regardless of size or business. And, that the present system has existed for decades to the benefit of big business. 

That is, pure licensing entities characterize the debate as being about who they are instead of their conduct. In that sense it reminds me a lot about of the debate that raged in the wake of the O.J. Simpson trial. 
…
Continue Reading O.J. Simpson & Patent Reform

Patentees: Be Careful What You Wish For…You Just Might Get It

Since the passage of the America Invents Act (AIA), the debate has raged as to whether or not the Patent Trial & Appeal Board (PTAB) should apply the broadest reasonable claim interpretation (BRI) for AIA trial proceedings. Some patentees and bar associations have been shortsightedly advancing the notion that BRI should not be employed in the patent challenge proceedings of the AIA (Inter Partes Review (IPR) and Post Grant Review (PGR)). Instead, they urge that BRI claim construction be replaced with the claim construction practices of the district court (i.e., Philips v. AWH). This is because, they argue, the new AIA proceedings are more “adjudicative in nature” as compared to past patent reexamination practices…and amendment isn’t really possible.

Yet, if Philips were adopted by the PTAB, patentees would see little in terms of benefit. In fact, such a change would likely make matters far worse for patentees. …
Continue Reading A Philips Construction at the PTAB Will Halt Patent Litigation

Misguided STRONG Act Would Undo Years of AIA Progress

Well, if you expected the Goodlatte Bill to sail through the House for swift passage through the Senate, forget about it. Hill chatter has indicated that the significant House support of the Bill has diminished since the last vote in 2013 (and rightfully so given the events of the past year). Perhaps of greater threat to the patent reform effort , however, is yesterday’s introduction of the “STRONG Act” on the Senate side (here), which makes clear that further patent reform is far from guaranteed for 2015. 

The STRONG Act, or “Support Technology and Research for Our Nation’s Growth Patents Act of 2015” removes the controversial fee shifting provision of the Goodlatte Bill (a key point of contention in past battles). More importantly, the Senate Bill adds a multitude of proposed changes to AIA trial proceedings that will have patent abusers dancing in the streets —the Bill is more aptly titled the “Support Trolls & Reverse Our Nation’s Progress under the AIA Act of 2015.” 

While this legislative grenade may not have much chance ever seeing the light of day, it is surprising that such misguided proposals would be seriously offered in the first instance.
…
Continue Reading Senate Democrats Propose Bill to Gut AIA Trials

Upcoming Post-Grant CLE

The PatentsPostGrant.com free monthly webinar series will resume in March. For more comprehensive CLE programs, there are a number of marquee programs on the immediate horizon.

First up is this week’s Utah IP Summit  (Friday, February 27th), topics include Surviving PTAB Review & Insulating Your Patent Portfolio. 

Next, is the The 10th

…

Agency Discretion Dictated by Petitioner Joinder Rationale

As discussed previously, in Target Corp. v. Destination Maternity Corp (IPR2014-00508) a divided PTAB panel permitted issue joinder. While the dissent argued that acceptance of issue joinder might permit a proverbial “second bite at the apple,” the majority countered that such gamesmanshp could be thwarted by judicious use of agency discretion.

As I have pointed out, petitioner’s sometimes exclude claims from an IPR petition that are not asserted against them in an ongoing litigation. For example, a complaint is filed alleging infringement of claims 1-10, but not claims 11-15. After the 12 month IPR window has passed, and the IPR for claims 1-10 is timely filed, the patentee may then amend their complaint to add claims 11-15. In this way. when the motion to stay pending IPR is argued, the patentee emphasizes that claims 11-15 are not part of the IPR. That is, there is no reason to “stay” as trial will be necessary for claims 11-15 regardless of the IPR outcome. In such a case, issue joinder would seem warranted— as opposed to a case in which the petitioner fails as to claims 11-15, but files a second petition as a “do-over.”

It seems the PTAB agrees, as demonstrated recently in Amneal Pharmaceuticals LLC. v. Endo Pharmaceuticals Inc. (IPR2014-01365, Paper 13, February 4, 2015).

…
Continue Reading PTAB Balances Gamesmanship Interests for Issue Joinder

Issue Joinder within Statute, Matter of Agency Discretion 

At the outset of this year, I explained how Target Corp. v. Destination Maternity Corp (IPR2014-00508) was one of five Patent Trial & Appeal Board (PTAB) decisions that changed post-grant trial practice in 2014. Target was notable because it was a significant departure from previous PTAB practice. That is, up until Target, a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., “issue joinder). The Target decision found issue joinder outside of the statutory authority granted by 35 U.S.C. § 315(c). cf. Microsoft Corp. v. Proxyconn, Inc., (IPR2013-00109, Feb. 25, 2013)

In Target, as in Microsoft, the petitioner filed a second petition outside of their 12-month window to attack a claim that was excluded from the Trial Order of an earlier, timely filed petition (argued as being necessitated by the patentee’s failure to provide requested materials in litigation discovery). Since joinder is a codified exception to the 12-month window, absent issue joinder, the claim could not be attacked with a second “stand-alone” petition. The Target majority denied issue joinder back on the basis that § 315(c) is directed solely to joinder of parties. 

A Request for Rehearing was filed in November of 2014 challenging the Target Decision. Today, the PTAB issued a second expanded panel decision reversing the 2014 decision.
Continue Reading PTAB Expanded Panel Reverses Field on Issue Joinder