Scott McKeown

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Preemptive Filing May Provide More Patentee Flexibilty in Amending

Prior to the AIA, some patentees would preemptively challenge their own patents in an ex parte reexamination proceeding in the hopes of staving off an imminent inter partes reexamination challenge. The thinking was that since the challenge was inevitable, it made more sense to choose the ex parte proceeding as statistically more favorable to patentees.  In essence the patent owner would rush in with art identified by an opponent so that a later presentation of the same art by the opponent in an inter partes reexamination filing would be deemed cumulative— and in some cases it worked. 

For patentees facing the imminent threat of a new AIA filing (IPR, PGR, or CBM) is this tactic still effective?
Continue Reading Patentee Tactic for Looming PTAB Patent Challenges

PTAB to Broadcast First IPR Hearing

With IPR proceedings limited, by statute, to a 12 month duration, many of the first IPRs pursued last fall will be concluding shortly. The first, IPR2012-00001 (Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC) will go to oral hearing on August 16th. The PTAB has set…

NPE Files Unsuccessful IPR Against Target

Over the years I have seen a handful of non-practicing entities (NPEs) pursue post grant challenges against the patents of their opponent. This “turning of the tables” by the NPE is an odd strategy since the patent of the innovator defendant is useless against an NPE (i.e., they don’t make or do anything to infringe). Clearly, the challenge is not to avoid infringement liability, or narrow a broad patent scope. Instead this tactic is an extension of the game NPEs play—that is, forcing cost and business uncertainty on their opponent to drive settlement.

Whether through patent reexamination, or the more robust Inter Partes Review (IPR), the ploy is almost always an afterthought. Not surprisingly,…

Continue Reading NPE Attempts to Exact License by Threat of IPR

Congress Winds Down to August Recess

It is highly likely that a new patent reform bill will be passed into law this fall given the intense congressional interest in the topic. Over the past few weeks, there has been an unprecedented flurry in the number of initiatives, executive actions, and bills proposed. Whether this political attention is truly responsive to the outcry of technology innovators being shaken down by “patent trolls” is unclear. Certainly there are some in Washington that simply recognize the existence of bipartisan support for legislation that can be spun during an election season as helping small businesses….needed or not. Whatever the motivation, something will almost certainly be passed into law…..but what? 

Rather than go through the details of each proposal being floated, there are concepts common to all. I provide an assessment of the likelihood of each to exit Congress as law in the coming months.

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Continue Reading Which Patent Reform Initiative Will Be Taken Up in September?

 Trolls Face Expensive Legal Battle To Prove Inapplicability of State Laws

When a patent troll asserts a patent claim of questionable merit against a defendant, the defendant is faced with two options: 1) fight a very expensive and time consuming legal battle to prove the correctness of their invalidity/non-infringement position; or 2) fold up tents…

AIA Alternatives to Patent Litigation Prove Wildly Popular

It’s hard to believe that it has only been 10 months since September 16, 2012. On that date, the new patent challenge proceedings of the America Invents Act (AIA) first became available. Since that day 400+ petions for trial (IPR and CBM) have been filed with the…

USPTO Faces Public Policy Dilemma

The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (CBM) upon request of the parties. This discretionary power to terminate a patentability challenge by agreement (37 C.F.R. § 42.74) is a new concept for the USPTO. Historically reexamination proceedings could not be terminated by agreement. In reexaminations (inter partes) where the contesting parties settled their dispute, the challenging party would simply drop out of the inter partes reexamination, but the Office would continue with the reexamination in the interests of public policy.  (cf. terminating an inter partes patent reexamination by operation of estoppel).

The PTAB greatly benefits from the ability to terminate post grant patent proceedings. This is because Board resources can be moved away from post grant proceedings that are no longer commercially relevant (at least as to the present parties) to those newly initiated, and there are plenty of them. Likewise, the ability to settle seems to encourage resolution of disputes as roughly 30 IPRs and CBMs have settled to date. But, some would argue that the public is left holding the bag for suspect patents that escape cancellation by operation of a private settlement.

While it is true that another challenger could come along and pick up where the last left off, such would be at a significant cost— AND the public would essentially be paying the USPTO twice for the same proceeding. Yet, there is a far better solution to this problem already on the books, one that would still allow the Board to free up judicial bandwidth. …
Continue Reading Public Policy vs. PTAB Post Grant Settlements

PTAB_Estoppel

CAFC Standard of Review Options Critical in Appeals From USPTO

The new patent challenge mechanisms of the America Invents Act (AIA) will greatly increase the number of CAFC appeal from the USPTO, as much as several hundred cases per year. This is because the patents subject to the new post grant proceedings (IPR, CBM, PGR) are almost always high-value assets involved in co-pending litigation, and these proceedings will conclude faster than any previous mechanism for challenging a U.S patent. At the time of this writing there are roughly 400 IPR and CBM proceedings pending, all of which will be ripe for appeal to the CAFC in 2014 absent settlement (rate of settlement is roughly 10% at present).

When evaluating the PTAB’s decisions on appeal, the CAFC employs either a de novo standard of review for questions of law or, the more deferential substantial evidence standard of review for questions of fact. Not surprisingly, appeals that employ the de novo standard provide a more significant opportunity for reversal. For this reason, it is important to understand the Court’s practice in applying one standard over the other.
Continue Reading Hundreds of PTAB Appeals Headed to CAFC in 2014