Scott McKeown

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Evidence of Petitioner Control Critical for PTAB Privity Finding

Under 35 U.S.C. § 315(b) a petitioner, real party-in-interest, or privy of the petitioner must seek Inter Partes Review (IPR) within 12 months of service of a complaint for patent infringement. In an attempt to dodge some IPR filings as time barred, patentees are urging the USPTO Patent Trial & Appeal Board (PTAB) to adopt an expansive interpretation of privy. That is, since parties are often time embroiled in patent suits at different times, expanding the 12 month window to encompass the first filed suit could insulate many patentees from dreaded IPR challenges.

As detailed previously, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014), the PTAB agreed that the existence of an indemnification agreement was probative of the opportunity for control by a supplier of a customer petitioner. However, the PTAB is seeking more than the mere existence of an agreement, but instead, hard evidence of control.…

Continue Reading Lack of PTAB Discovery to Shift Privity Question to District Courts

PTAB Rejects Early Motions to Exclude as Improper

The Patent Trial & Appeal Board (PTAB) has begun issuing a steady stream of final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings. In these initial decisions, the Board is denying a significant number of improperly filed motions to exclude from both petitioners and patentees alike. Specifically, the Board is urging that a proper motion to exclude is not filed to: (1) challenge the sufficiency of the opposing parties evidence; (2) serve as a sur-reply; or (3) attack evidence raised in petitioner filings as being “new.” Instead, a proper motion to exclude must be keyed to an earlier made evidentiary objection.

While the PTAB is diligently educating the public on the proper motion practice in the initial wave of decisions, failure to heed the guidance in these initial decisions may result in attorney sanctions down the line.…

Continue Reading PTAB Explains Proper Role of Motions to Exclude

Indemnification Obligation May Trigger IPR Clock

Indemnification from a claim of patent infringement is a common warranty in contractual agreements for the exchange of technological goods. In the event of an infringement claim against the contracted goods/services, a demand for indemnity triggers a duty of the supplier to defend against the claim in some manner, typically funding the defense, or taking over responsibility for the defense effort. As I discussed previously, indemnification clauses require special attention after the America Invents Act (AIA).

Recently, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014) the Patent Trial & Appeal Board (PTAB) analyzed the interplay of an indemnification obligation as it relates to 35 U.S.C. § 312(a) and the 12 month window of 35 U.S.C. § 315(b). That is, does the existence of a contract/indemnification clause create privity between the contracting party under the IPR statutes, or render an indemnitor a real-party-in-interest with respect to the indemnified party?
Continue Reading Beware: Indemnification May Create Privity Under IPR Statutes

Post Grant CLE Tomorrow at USPTO

Just a reminder that the 9th Annual Advanced Patent Law Institute is underway at the United States Patent & Trademark Office (USPTO. This two day program offers several post grant patent discussions tomorrow, including:  AIA Practice Tips Before the Patent Trial and Appeal Board; Post-Grant Proceedings, Strategies and Practice…

AIA patent prosecution

PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm

As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin.‘ While Bob clearly had some broader ranging social issues on his mind when he penned those lyrics, they are quite befitting of the outdated philosophies driving most U.S patent prosecution practices in the aftermath of the America Invents Act (AIA).

I’m not talking about the change over in March 2013 from the first-to-invent system to the first-inventor-to-file system of the AIA, but instead, the de facto switch in September 2012 from the “infringement first” philosophy of patent prosecution to the new, balanced patentability/infringement model. That is, before the introduction of the AIA post grant challenge mechanisms, Inter Partes Review (IPR), Post Grant Review (PGR), and the transitional program for Covered Business Method Patents (CBM), securing a maximum claim breadth was the primary driver of patent prosecution practices — the broader the better.

The infringement first philosophy is now dead— as will be your patent portfolio unless you change your tune.

Continue Reading Post Grant Proofing Your Patent Portfolio

CAFC

USPTO Appeals to Grow for CAFC

In 2013 the patent-challenging public took notice of the USPTO’s Patent Trial & Appeal Board (PTAB) in a big way. With as many as 100 post-grant patent challenges being pursued per month at the PTAB, the unique considerations required to successfully navigate these proceedings from the PTAB on through…

PTAB Begins Front Loading IPR & CBM Schedules

The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, an Inter Partes Review (IPR), Post Grant Review (PGR) or Covered Business Method (CBM) must conclude, by statute, within 12 months of institution. This turnaround is a dramatic improvement over the 3-5 year pendencies that plagued patent reexamination. For this reason, the PTAB has been a major disruption to the business of patent licensing and assertion in the U.S; especially to that of the dreaded “patent troll.”

For patentees faced with a PTAB post grant challenge it’s only getting worse. As of mid-December, the PTAB has accelerated trial schedules so that oral argument is scheduled a mere 7 months from trial institution. This is a full two months earlier than the previous default schedule.…

Continue Reading PTAB Accelerates Post Grant Trial Schedules by Two Months

Are NPE Judgments Under Attack?

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is the most disruptive to the patent litigation landscape.

As was made very recently apparent in Fresenius USA v. Baxter Int’l. (Fed. Cir. 2013), a damage judgment is not necessarily safe from collateral attack unless and until it is actually satisfied by the putative infringer.

Since Fresenius, most patentees have taken solace in the fact that such a patent reexamination based fact pattern is exceedingly rare. Yet, if you are one of the many plaintiffs sitting on a large verdict, you will have a new worry in the months ahead—the PTAB troll.…

Continue Reading The Rise of the PTAB Troll