Scott McKeown

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CAFC Denies En Banc Review of In Re Baxter Decision

Earlier this year, the CAFC decided In re Baxter International Inc. (here). As a reminder, in Baxter, the CAFC considered an appeal from the Board of Patent Appeals & Interferences (BPAI) that found certain claims of U.S. Patent 5,247,434 unpatentable in an ex parte patent reexamination.

The request for patent reexamination was filed by Fresenius USA Inc. in 2007 during a patent infringement litigation with Baxter. Interestingly, the Court first considered the validity of the ‘434 patent on appeal from that litigation. In that first appeal, based on some of the very same art applied in the reexamination, the Court found the patent not invalid in 2009. In the second appeal, decided in May of 2012, the same art was presented to the Court. Viewing the same art in 2012, on appeal from the BPAI, the Court affirmed the determination of the BPAI that the claims were obvious over the applied prior art.

Judge Newman issued a strong dissent to the second outcome, explaining that “[t]he validity of the Baxter patent was resolved upon litigation in the district court and on appeal to the Federal Circuit. This judgment cannot be “revised, overturned or refused full faith and credit by another Department of Government. . . .. Nonetheless, the court again departs from this principle, trivializes our prior final judgment, and simply defers to the conflicting agency ruling. This is improper.”

Not surprisingly, Baxter petitioned for rehearing and en banc review of the earlier decision.
Continue Reading CAFC Refuses En Banc Review of “Do-Over” Patent Reexamination

Reasonably Could Have Raised?

The new post grant trial proceedings of the Patent Trial & Appeal Board (PTAB) provide game changing opportunities for patent challengers. These opportunities include the virtual guarantee that certain business method patent litigation will be stayed pending the outcome of a Covered Business Method (CBM) patent challenge, and the ability to challenge an entire portfolio at one time. Indeed, the later opportunity was never before possible in any proceeding, USPTO, district court, or otherwise.

Yet, the new proceedings are not without some risk. For example, Inter Partes Review (IPR), much like its’ predecessor inter partes patent reexamination, operates to estop the challenger from making arguments in a later proceeding that were either raised or “could have been raised” in the previously concluded PTO proceeding. This “could have been raised” estoppel was revised for IPR proceedings, slightly, to embrace issues that “reasonably could have been raised.” The legislative history indicates that this change was designed to impart some term of degree of practicality to the new IPR estoppel standard.

While the prospective estoppel that may apply to petitioners of IPR proceedings has been softened, unlike patent reexamination requests, IPR petitions are limited to 60 double spaced pages. So, practically speaking, there are a limited number of issues that can be presented in 60 double spaced pages.

How will this IPR page limitation impact the “reasonableness” analysis of the district court?
Continue Reading Hedging Against Petitioner Estoppel at the PTAB

Expanded PTAB Panel Outlines Requirements for Unregistered Practitioners

Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c). In a previous discussion on this topic, I relayed the explanation of Chief Judge Smith that was provided on the USPTO website (America Invents Act (AIA) micro site) relative to the philosophies behind the PTAB’s pro hac vice rule proposal.

Earlier this month, an expanded panel of the PTAB issued the first order authorizing motions for pro hac vice admission in (IPR2013-00010) (order here).

The Order outlines the requirements for the motion an accompanying declaration as follows:…
Continue Reading PTAB Issues Order Outlining Base Pro Hac Vice Qualifications

InconsistencyCourt Troubled by Own Inconsistent Precedent

As explained very recently by Director Kappos, the USPTO has a well established practice of applying a broadest reasonable claim interpretation (BRI) in proceedings before the USPTO. For this reason, Director Kappos explained that although the AIA was silent on the type of claim analysis to be applied in the new post grant proceedings of the Patent Trial & Appeal Board (PTAB), BRI was deemed necessary for, inter alia, administrative consistency.

Yesterday, in Flo Healthcare Solutions, LLC. v. Kappos, the CAFC advanced a similar consistency theory in questioning whether or not USPTO claim constructions should be reviewed under a de novo standard, as is the court’s routine practice. Or, whether the USPTO’s constructions should be entitled to a different, “reasonableness” analysis as enunciated in some of the court’s more recent precedent. (decision here)
Continue Reading CAFC Contemplates De Novo Review of USPTO Claim Constructions

USPTO Adopts ABA Model Rules

Today the USPTO will publish a notice in the Federal Register to update the USPTO Rules of Professional Responsibility and to revise procedures for disciplinary investigations and proceedings. (reading room copy here). The notice explains that the notice of proposed rulemaking is designed to align USPTO Rules of Professional…

Unsuccessful CBM Challengers Forced Back into Court?

As discussed last week, the Transitional Program for Covered Business Method Patents, or “CBM” proceeding offers significant advantages to qualifying patent challengers. While technically a Post Grant Review (PGR) proceeding, CBM is free of the Draconian estoppel provision applied to PGR. CBM estoppel is limited to those grounds actually raised in the proceeding (that is, there is no “reasonably could have raised” estoppel as in PGR).

More specifically, Sec. 18 of the America Invents Act (AIA) defines a CBM proceeding as following the “standards and procedures of PGR with the following exceptions:

Section 321(c) of title 35, United States Code, and subsections (b), (e)(2), and (f) of section 325 of such title shall not apply to a transitional proceeding.

-Section 321(c) is the nine month window employed in PGR.
-Section 325(b) precludes stays of court actions when a motion for preliminary injunction is pending.
-Section 325 (e)(2) defines PGR estoppel (“raised or reasonably could have been raised”)
-Section 325 (f) precludes PGR for certain reissue patents.

By eliminating the “reasonably could have been raised”  aspect of PGR estoppel the CBM proceeding ostensibly presents a  “free shot” proposition for patent challengers….but, unsuccessful CBM challengers may be surprised to learn that PGR estoppel will apply to the challenger in later, USPTO proceedings.
Continue Reading The Asymmetric Estoppel of Business Method Patent Challenges

New CBM Challenges to Derail Business Method Patent Assertions?

Last September 16th marked the one year anniversary of the enactment of the America Invents Act (AIA). This “patent reform” legislation introduced several new post grant avenues to challenge an issued patent at the USPTO. One of these new options is the very specialized, Transitional Program for Covered Business Method Patents, or “CBM” proceeding.

The CBM option is noteworthy in several respects: first, it is a post grant review challenge that is limited to a special class of patents (i.e., “covered business method” patents); second, only those challengers that have been sued or charged with infringement of a covered patent may petition the USPTO to initiate a CBM proceeding; third, the estoppel is limited to those grounds actually raised in the proceeding (that is, there is no “reasonably could have raised” estoppel); and finally, the CBM statutes include unique controls that virtually ensure that any ongoing litigation at the time of a CBM filing will be stayed pending USPTO review.

As explained above, the CBM proceeding presents an insignificant of estoppel risk. This “free shot” combined with the near certain stay of costly court proceedings presents a “pay to stay” opportunity that qualifying defendants may find hard to resist.

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Continue Reading Pay to Stay….The Game Changing Impact of Business Method Patent Challenges

USPTO Provides Comprehensive AIA Resources

For those that may have missed the various CLE programs and USPTO road shows of the past few weeks, video highlights of the AIA Roadshows are posted on the USPTO web site (here). Also, a very comprehensive slide deck covering all AIA changes effective on September 16, 2012

Specification Crucial in Proper BRI Analysis

It is well established that the USPTO applies a broadest reasonable claim interpretation to patent applications and patents subject to post issuance proceedings. The abbreviation “BRI” is often used as a short hand reference to the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, the shorthand notation “BRI” is often mistaken as the standard. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, the broadest reasonable interpretation of the claims that is consistent with the specification of the subject application or patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required consideration of the specification in a proper BRI analysis.

In 2010, the CAFC cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Earlier this week, the agency was reversed again, due to the guidance of the patent specification in In re Abbott Diabetes Care Inc. (here)…
Continue Reading CAFC Again Reverses USPTO on BRI Claim Interpretation