Scott McKeown

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CAFC Finds SNQ Denial Not Subject to Appeal in Inter Partes Patent Reexamination

Back in March of 2011, an expanded panel of the Board of Patent Appeals & Interferences (BPAI) decided Belkin International et al., v. Optimumpath LLC. Belkin’s appeal stemmed from a denial of a proposed SNQ of an inter partes patent reexamination request of  U.S. Patent 7,035,281 (95/001,089). The initial request for inter partes patent reexamination was granted as to claims 1-3 and 8-10, but denied as to claims 4-7 and 11-31.

The denial of the SNQ targeting claims 4-7 and 11-31 was petitioned to the Director of the Central Reexamination Unit (CRU). Upon reconsideration, the Director refused to reverse the examiner. On the other hand, Belkin did not petition the denial of SNQs pertaining to the claims being actively reexamined (claims 1-3 and 8-10). During prosecution of the reexamination, the rejection of claims 1-3 and 8-10 was withdrawn by the examiner. Thereafter, Belkin appealed the withdrawn rejection of claims 1-3 and 8-10 together with the denial of the SNQs pertaining to those reexamined claims.

The procedural issue before the Board was whether or not denied SNQs, which pertain to claims being actively reexamined (i.e., claims 1-3 and 8-10) must be petitioned rather than appealed to the BPAI. The Board found that:

[I]f the Director makes the non-appealable determination that no substantial new question of patentability has been raised, then reexamination is not performed for those claims in question with respect to the corresponding prior art references. There cannot have been a final decision (either favorable or unfavorable) on the patentability of the claims in question under 35 U.S.C. § 315(b), the claims not having been reexamined in the first place for lack of a substantial new question of patentability. (emphasis added)

Yesterday the CAFC weighed in on the debate.
Continue Reading CAFC Sides with USPTO on SNQ Debate

How Often Are Examiner Claim Confirmations Upheld in Inter Partes Patent Reexamination

For challengers in an inter partes patent reexamination (IPX), confirmation of patent claims by the examiner can pose a significant set back. That is to say, the challenger would be estopped (35 U.S.C. § 317(b)) from raising invalidity defenses that “could have been raised” relative to the confirmed claims during the IPX proceeding, in a later court proceeding.

Although IPX is no longer available as an option to patent challengers, the rate of affirmance by the PTAB in such situations will still be of significant interest in the years to come thanks to the avalanche of IPX filings submitted to the USPTO earlier this month.

Based upon the outcomes of the IPX decisions issued so far in 2012, challengers have about a 50/50 chance of reversing at least one claim of the examiner confirmation.
Continue Reading Examiner Claim Confirmations in Inter Partes Patent Reexamination, What Happens on Appeal?

USPTO Clarifies Stance on 101 Challenges Before the PTAB

Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter (35 U.S.C. § 101). Under the discussed theories, a 101 challenge is not a statutory basis for invalidity, and, as such, is necessarily excluded from the available grounds to initiate Post Grant Review (PGR) and the Covered Business Method (CBM) Challenge. I, for one, never quite followed the logic of this argument as it seemed to ignore the reality of the controlling case law on point (if not the explicit legislative history of the AIA).

This past Monday, USPTO Director Kappos explained (quite correctly in my opinion) that PTAB patentability challenges embrace 101 grounds (ttp://www.uspto.gov/blog/”>here).

The Director explains that:…

Continue Reading Section 101 as a Basis for a Post Grant Patent Challenge

So Let It Be Written, So Let It Be Done…Your Patent Portfolio That Is

Two weeks back I discussed the “patentee estoppel” impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial proceeding of the Patent Trial & Appeal Board (PTAB), the Patentee is thereafter precluded from taking an inconsistent action before the USPTO. This preclusion includes, obtaining in any patent, a claim that is not patentably distinct from the finally refused or cancelled claim.

In the earlier post, I discussed how the final refusal or cancellation of a patent claim could have a devastating impact on active continuation patent application portfolios. This is because when a parent patent has a broad, generic claim cancelled or refused in a post grant trial of the PTAB, the Patentee is estopped from pursuing a continuation (or reissue) application presenting claims of indistinct scope. Absent a proactive strategy, such a result would significantly undermine the investment in continuation application portfolios of large patent filers.

Perhaps even more disturbing, is the infectious nature of this estoppel relative to other, issued patents of an unsuccessful Patentee.
Continue Reading Creeping Death….The Infectious Estoppel Impact of PTAB Validity Trials

Patent Challengers Submit Hundreds of Patent Reexamination Filings in One Week

As pointed out earlier this week, the USPTO began accepting petitions for the new post grant trial proceedings of the America Invents Act (AIA) at 12:01AM Sunday morning. As the USPTO approached the midnight kick off for the new filings it was simultaneously closing…

First Covered Business Method (CBM) Challenges & Inter Partes Review Petitions Filed

The new Patent Trial & Appeal Board (PTAB) web portal, known as the Patent Review Processing System (PRPS) went live at 12:01AM Sunday morning. At the time of this writing, 7 petitions for Inter Partes Review (IPR) have been filed, as well as…

First Inter Partes Review & Covered Business Method Filings Headed to the USPTO

The USPTO’s Patent Trial & Appeal Board (PTAB) opens its doors for business this coming Monday. As a reminder, submissions to the PTAB will need to be filed via the Patent Review Processing System (PRPS). The web portal system will go live…

Continuation Applications to be Collateral Damage to PTAB Proceedings?

The new patent validity trials of the Patent Trial & Appeal Board (PTAB), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), and Inter Partes Review (IPR) introduce a new layer of estoppel for Patentees. This estoppel, once triggered by claim cancellation or refusal by the Patent Trial & Appeal Board (PTAB), could operate to effectively forfeit a Patentee’s continuation application portfolio.

The danger is significant as it is common practice for many Patentees to maintain continuation patent applications long after the issuance of a first patent. The pending continuation applications allow Patentees to adapt/refine their claims to changing products of the marketplace such as when competitors attempts to “design around” the claims of the initially issued patent. In this way, a robust continuation portfolio serves as a further hedge against infringement of the base patent. Indeed, for many large stakeholders, continuation patent application portfolios constitute a major investment.

Once a patent is challenged in a petition for IPR, PGR, or TPCBMP, what can a patentee do to protect their investment in continuation patent applications?

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Continue Reading Post Grant Patent Challenges To Threaten Continuation Portfolios

Stafford Legal Webinar on PTAB Practice

Next week, the Patent Trial & Appeal Board (PTAB) will begin to accept petitions for the post grant patent validity trials of the America Invents Act (AIA). For those needing a refresher, or crash course in the new proceedings, next Tuesday September 18th Stafford legal will host a 90-minute…