Scott McKeown

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Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review

The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason, it is far easier to demonstrate unpatentability of a patent claim at the USPTO as compared to invalidity in the district court, which applies the clear and convincing evidentiary standard. As pointed out last week, art failing the lower threshold of the USPTO may even result in summary judgment of no invalidity in the district court. 

Applying the above logic then, it would seem imprudent to argue invalidity in the district court based upon art explicitly considered, and rejected by the USPTO in a post-grant proceeding. That is, unless you can convince the court that the earlier USPTO proceeding was incompetent.

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Continue Reading Court Unimpressed by PTO Review of Prior Art

Technical Difficulties, Sorry for the Inconvenience

Now that PatentsPostGrant.com has hit the 5 year mark, it was time to abandon our 2008 era platform. Please excuse the unnecessary email notifications that went out today, all should be sorted out by tomorrow. (Notifications are disabled for the time being, so please check back frequently, or switch…

Board Emphasizes DJ of Invalidity Prevents Later CBM Filing

The Patent Trial & Appeal Board (PTAB) issues three (3) types of opinions, routine, informative and precedential. The vast majority of PTAB decisions are routine, that is, decisions that are simply publicly available. These decisions may be cited for whatever persuasive value they may have but, as a general matter, routine opinions should be cited sparingly.

Informative decisions are those are not binding, but illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. Going forward, most designations from the PTAB Trial Section are likely to fall into this category.

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Continue Reading PTAB Issues First Precedential Opinion of AIA Trials

Stretching Prior Art Grounds Fatal to Petitioners

 
In district court, 102 grounds are highly preferred to even the strongest 103 ground. This is because of the uphill battle in demonstrating invalidity in a forum that not only applies a presumption of patent validity, but also requires clear and convincing evidence of invalidity. Obviousness just does not resonate with non-technical fact finders as well as anticipation. For this reason, patent challengers in the district court will often creatively argue 102 grounds on the basis of “inherency.”
 
Now that patent validity disputes are increasingly heading to the Patent Trial & Appeal Board (PTAB), challengers find themselves in a difficult situation. That is, where a 102 ground has been “stretched” in the co-pending litigation, for consistency, the same position is being advanced at the PTAB. This practice has led to some unfortunate results for those allowing their district court case to drive their PTAB strategy.

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Continue Reading Petitioner Over-Reaching at the PTAB Results in Adverse Summary Judgment

Briefing to Review Federal Register Notice Concerns

The Patent Trial and Appeal Board (PTAB) is hosting a free lunchtime webinar tomorrow from noon to 1 pm(EST) to discuss AIA trial proceedings. At the webinar, Acting Vice Chief Judge Scott Boalick, who heads the Trial Section of the Board, will discuss non-rule recommendations received from stakeholders during…

Past Three Months of PTAB Statistics Tell A Different Story

Last week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage points in the past year. However, the averaging of 2012-14 proceedings does not tell the current story. Whether you agree with my explanation of this recent phenomena as a reflection of poor petition quality or not, there is clearly a heightened focus on the preliminary proceeding (i.e., petition stage).

What was left out of last week’s post was a snap shot of what is actually going on at the PTAB  today— the effective institution rate right now.
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Continue Reading PTAB Institution Rate Dips Into 60% Range

Briefing to Review Federal Register Notice Concerns

The Patent Trial and Appeal Board (PTAB) is hosting a free lunchtime webinar on Tuesday, July 29th from noon to 1 pm(EST) to discuss the AIA trials. At the webinar, Acting Vice Chief Judge Scott Boalick, who heads the Trial Section of the Board, will discuss non-rule recommendations…

2014 PTAB Institution Rate Retreats to 70% Range

To date, a major patentee criticism of Inter Partes Review (IPR) & Covered Business Method (CBM) patent challenges has been their high rate of institution. Patentees were quick to point to the 85+% institution rate of the Patent Trial & Appeal Board (PTAB) as evincing an anti-patent bias. This dull roar was then amplified by then CAFC Chief Judge Rader labeling the PTAB a patent “death squad.” In response, the PTAB patiently explained the relatively small sample size of instituted proceedings, the fact that trial does not always go forward on all claims, and that there was a natural selection of weak patents in the early days of IPR and CBM. The PTAB suggested that in the months ahead, the institution rate would normalize. Yet, these reassurances fell on mostly deaf ears.

Now that a larger sample size is available (and soon to be growing by 100+ decision every month), the PTAB predictions are beginning to materialize.
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Continue Reading PTAB Dials Back Petitioner Success Rate

Favorite Criticism of PTAB Proceedings Falls Flat

The Patent Trial & Appeal Board (PTAB) is currently seeking feedback from the public on the first two years of administrative patent trials of the America Invents Act (AIA). The very first issue presented for consideration in the recent Federal Register Notice is the continued use of the broadest reasonable claim interpretation (BRI) in PTAB post-grant patent challenge proceedings.

Since the passage of the America Invents Act (AIA) some patentees have been advancing the notion that BRI should not be employed by the PTAB. Instead, they argue that BRI claim construction should be replaced with the claim construction practices of the district court (i.e., Phillips v. AWH). Critics insist that the new AIA proceedings are more “adjudicative in nature” as compared to examiner based patent prosecution/reexamination practices, and, that PTAB post-grant patent practices should be consistent with the courts. Of course, the true concern at the heart of this “consistency” argument is that the Board is arriving at an unduly broad construction compared to that of the courts. That is, critics of PTAB claim construction practices believe a Phillips analysis to be inherently narrower than BRI. (i.e., more patent validity/patentability friendly).

This belief is mainly driven by cases where a patent claim previously construed by a court, is later construed to have a broader scope by the PTAB. The fault in this logic is two-fold. First, it is assumed that a Phillips analysis necessarily dictates a narrower construction, and, second, that the district court constructions were not unduly narrow in the first instance.
Continue Reading PTAB Finds BRI Claim Construction No Different Under Phillips

EDTX Denial of CBM Stay Deemed Abuse of Discretion

Back in March I recounted the curious case of VirtualAgility Inc., v. Salesforce.com Inc., et al. (EDTX). In this dispute, Salesforce.com sought a stay of the EDTX litigation pending Covered Business Method (CBM) review of the VirtualAgility patent. The CBM petition was filed with the USPTO Patent Trial & Appeal Board (PTAB) on May 24, 2013 as CBM2013-00024.

The EDTX determined that a stay was unlikely to simplify the issues for trial based upon an independent assessment of the CBM. This was despite the fact that the PTAB went forward with the CBM (i.e., determined that all of the claims were more likely than not unpatentable on multiple grounds), and the patentee had already amended their claims. Thereafter the case was effectively stayed anyway pending interlocutory appeal to the CAFC (a right newly provided by the CBM statute).
Continue Reading CAFC Reverses EDTX on Second Guessing of PTAB