Scott McKeown

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Stay Calculus to Encourage Multi-Defendant Attacks

As the new patentability trials of the America Invents Act (AIA) have only been available for 7 months their impact is only now beginning to be felt in the district courts. The new USPTO Patent Trial & Appeal Board (PTAB) proceedings permit suspect patents of any vintage to be reconsidered in a far more speedier, cost effective, and challenger friendly manner relative to that of the federal district courts. Not surprisingly, there has been a robust demand for these proceedings with over 200 such petitions filed since September 16th—many of which target the patents of non-practicing entities (NPEs).

The impact of these new PTAB proceedings are beginning to be felt in the district courts as motions to stay the costlier court proceedings pending PTAB review are being considered almost daily. And, many courts are staying the parallel litigation in favor of the speedier USPTO proceedings. Interestingly with the argument of multi-year USPTO reexamination delays now eliminated by the faster PTAB proceedings, Patentees (NPEs in particular) are now emphasizing to the courts that estoppel only applies to the petitioner or real party in interest—not necessarily every defendant in a multi-defendant suit. As such, NPEs argue that a concluded PTAB proceeding will not simplify issues for trial because defendants that did not join in the petition filing would be free to raise the very same issues decided in the PTAB proceeding upon lifting of the stay.

The solution for non-petitioning defendants facing such an argument is really quite simple…..just pile on.…

Continue Reading NPEs Unwittingly Invite Lopsided Battles at PTAB

Suit Takes Aim at “Business Method” Definition & Propriety of 101 Grounds

The very first petition for a Covered Business Method Patent Challenge (CBM) was filed on September 16th by SAP (CBM2012-00001). The petition (here) challenged U.S. Patent  6,553,350 of Versata Development Group. In May of 2011, Versata secured a $391 million dollar…

Liberal Stay Policy Thwarts Patent Suits in New Jersey

Non-practicing entities or “patent trolls” are generally those plaintiffs that seek to enforce patent rights against an industry in which they themselves do not compete. Stated another way, an NPE’s only business is patent litigation.

Often times the patents an NPE is enforcing were purchased from a traditional technology company for the sole purpose of exacting royalties from the relevant industry. In the hands of an NPE, which has no technological industry subject to a patent counter suit by their industry targets, the NPE patents become especially powerful weapons of economic coercion.

Over the last decade, law firms have recognized the efficacy of NPE litigation campaigns and have signed on in great numbers to get a piece of the action. Typically, an NPE will team up with a law firm that will conduct the campaign on their behalf in exchange for a contingent fee arrangement. (i.e., percentage of the collected settlements). This profiteerring business model has lead to a significant proliferation of patent infringement suits.

Just not in New Jersey.
Continue Reading New Jersey Solves Patent Troll Problem

Robust Filings Reported for Some AIA Proceedings

Late last week, the USPTO issued a Final Rule to implement the Technical Amendment to the America Invents Act (AIA). The Notice essentially revises 37 C.F.R. § 42.102 to eliminate the “dead zone” for certain first inventor to file patents. You can find the straight forward rule notice (here) The rule became effective yesterday, March 25th.

In other news, the Patent Public Advisory Committee (PPAC) convened on March 15th at the USPTO Alexandria campus. During the meeting, the USPTO reported on the progress of AIA filings to date. There continues to be robust demand for Inter Partes Review (IPR), but others of the new AIA mechanisms have not proven nearly as popular as originally thought.
Continue Reading Post Grant Buzz – Spring 2013

Raising of Evidentiary Informalities Prior to Trial Institution

During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO’s definition of a “proceeding’ includes the preliminary proceeding (i.e., petition filing, preliminary response) it is important to keep in mind that the the trial Order is not the final word of the PTAB on patentability; it is simply a preliminary gauge of the merits prior to trial. The “trial” itself does not actually begin until after institution. As such motions by the Patentee that are directed to perceived evidentiary defects of the petition are deemed premature prior to trial institution.

This issue is often raised in the context of printed publications accompanying a petition to the PTAB for a patentability trial. While patents are considered self authenticating by the USPTO, publications can be considered inadmissable if not authenticated (and perhaps hearsay as to undated submssions) by the petitioner. But, the PTAB has set the time to challenge such evidence post-institution via a motion to exclude.…

Continue Reading Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?

Fee Setting Authority Decreases Post Grant Costs

Based upon the fee setting authority provided in Section 10 of the America Invents Act (AIA), the USPTO post grant filing fees will be downwardly adjusted for both patent reexamination and the patentability trial proceedings of the Patent Trial & Appeal Board (PTAB). The new fees are discounted from the rates that became effective last September 16th, and take effect tomorrow, March 19th. (final rules here)

The fees for PTAB proceedings will be broken up into petition and trial phases. The apportionment enables the office to more precisely calibrate costs so that refunds may be provided, where appropriate. The petition portion of the fees correspond to the cost of considering the petition filing only. The trial portion of the fees corresponds to the cost of conducting the trial. The fees for patent reexamiantion will decrease for all filers, but will drop by 60-80% for those requesters qualifying as small and micro entities.

A more detailed explanation of the fee changes is provided below.…
Continue Reading USPTO Post Grant Fees Cut on March 19th