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 verdict in
One of the more intriguing provisions of the new post grant patent proceedings of the America Invents Act (AIA) is the ability to settle these patentability disputes by agreement. Unlike existing patent reexamination practices, the USPTO will terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents
In recent months there has been much discussion of the USPTO’s decision to open satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley. The Detroit office opened in July 2012 and hosts about fifty examiners and ten administrative patent judges (APJs). A location has been selected for the Dallas-Fort Worth office and the site selection
Last week during his YouTube broadcast, President Obama labeled software patent trolls as extortionists. In doing so, he also commented that the recent patent reform only went “half way” to solving the existing patent litigation explosion in this area. Shortly thereafter the Internet was abuzz that perhaps the Administration was considering a new legislative effort.
Perhaps most interesting is the President’s characterization of the previous reform effort as only going “half way.” Can the Administration really be considering a second salvo?
Continue Reading Patent Reform Redux?
Prior to September 16, 2012, ex parte patent reexamination was the only USPTO option for challenging the validity of patents that issued from patent applications filed before November 29, 1999. This is because the inter partes patent reexamination statutes excluded those patents that issued from applications of the pre-1999 vintage. So, for those patent challengers hoping to take advantage of the lower cost USPTO proceeding as an alternative to patent litigation, ex parte patent reexamination was the only show in town— albeit, statistically speaking, a less than ideal option for patent challengers.
Further, ex parte patent reexamination provided the only manner by which a patent challenger could remain anonymous. This feature was especially important for those challengers hoping to test the mettle of an issued patent without inviting a retaliatory law suit from the Patentee.
Of course, the post grant patent world changed forever on September 16th 2012. On this date inter partes patent reexamination was discontinued in favor of the more robust Inter Partes Review (IPR) proceeding. Unlike its predecessor proceeding, IPR proceedings may be used to challenge any patent, regardless of vintage. In addition to this important expansion in inter partes applicability, the USPTO fee to request an ex parte patent reexamination soared from $2520 to $17,750.
So, with the availability of the more robust IPR option, and the attendant price increase to ex parte reexamination, is there still value in pursuing an ex parte patent reexamination proceeding?
Continue Reading Is There Value To Ex Parte Patent Reexamination After the AIA?
The new patentability trial proceedings of the Patent Trial & Appeal Board (PTAB) have been met with great enthusiasm by many science and technology innovators as the first true alternative to patent litigation; especially those faced with costly “patent troll” assertions. Still, there are a small minority of patent challengers that look on these “new” proceedings with great fear and skepticism. These naysayers will often dismiss the speedier, lower cost PTAB proceeding as being too much of an estoppel risk.
The estoppel concern is almost always distilled down to two unenlightened propositions. That is, a fear of a “new, untested and unpredictable” proceeding, and the belief that the USPTO may somehow give short shrift to the submitted prior art.
Both criticisms are easily demonstrated as misguided.
Continue Reading Specialized Patent Judges Vs. The Eastern District of Texas Plumber
Troll Assertions to be Stayed Instantly Upon Filing of CBMThe new post grant patentability trials of the America Invents Act (AIA) are designed to serve as alternatives to costly patent litigation. One of the new post grant options is the very specialized, Transitional Program for Covered Business Method Patents, or “CBM” proceeding. This proceeding, like Inter Partes Review (IPR), is conducted before the administrative patent judges of the USPTO’s Patent Trial & Appeal Board.
The CBM option is noteworthy in several respects, but perhaps of greatest interest to patent challengers is the degree to which courts must defer to the USPTO. That is to say, when faced with the decision to stay or proceed to trial on a qualifying business method/e-commerce patent, the court is left with little choice but to halt proceedings.
As recently demonstrated by the district court in Markets-Alert Pty Ltd. v. Bloomberg Finance LP, et. al (DED), a stay is even warranted for CBM petitions still awaiting initial disposition by the PTAB. (here)
Continue Reading Business Method/E-Commerce Patent Trolls Pronounced Dead
In recent weeks the USPTO has issued updates on various aspects of post grant patent practice and PTAB performance. The PTAB reports that their significant backlog has not only stopped growing, but will soon begin shrinking thanks to the increased hiring of administrative patent judges (APJs). With a typical ex parte application appeal pending 2-3 years in many cases, this is welcome news for appellants. (presentation here)
On the post grant side, an update was provided on patent reissue practice. The presentation mostly recapped recent case law developments and changes to oath practice. (presentation here)
An update was also provided from the PTAB Trial Section on the patentability trials of the America Invents Act (AIA).
Continue Reading PTAB Updates on Post Grant Filings & Decreasing Backlog
On September 16th, 2012 the new post grant patent proceedings of the America Invents Act (AIA) became available to patent challengers for the first time. These proceedings have only been available for a few months, but there has been a robust demand for these proceedings with over 120 petitions filed in the first few months—many of which target NPE portfolios. This filing rate is equal to about one IPR petition per business day. The USPTO is estimating that as many as 300 petitions will be filed in the first 12 months of availability. This filing rate would be consistent with the demand for the predecessor proceeding, inter partes patent reexamination.
As a reminder, IPR allows challenges to suspect patents of any vintage in a speedier, more cost effective, and challenger friendly manner relative to that of the federal district courts. That is to say, for the very first time, there is a true, accelerated alternative to patent litigation. The new post grant proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) will conclude in a fast enough time (12-18 months) to transform the existing litigation landscape in a manner that will significantly undermine the NPE patent litigation business model.
Breaking down the petitions to date,
Continue Reading Patent Trolls Drive Demand for New AIA Post Grant Proceedings
For those seeking CLE in the coming months, there are numerous upcoming options. The Practicing Law Institute’s USPTO Post Grant Trials- 2013 (now in its 4th year) will soon be making stops across the country. This year’s program will coincide with the release of the new treatise entitled Post Grant