Scott McKeown

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PTAB Rule Packages to Publish on August 14th

The final rule packages for the new post grant patent proceedings of the Patent Trial & Appeal Board (PTAB) were expected to issue last week but were obviously delayed.  The USPTO informed the Intellectual Property Section of the ABA (at the ABA annual meeting last weekend) that these final rule packages will publish on August 14th. (available in the Federal Register reading room on the 13th). The delay is a result of the time needed for publishing agencies to review such a significant submission. For example, last Friday the USPTO was asked to adjust minor formatting, section headings/numbering, etc to the original submission made in July.

While the agency was tight lipped as to changes in the final rules during their presentations over the weekend, reading between the lines…
Continue Reading USPTO Buzz — Rule Packages and PTAB Roll Out

New Bill Seeks to Recover Costs of “Egregious Legal Disputes”

Since the enactment of the America Invents Act (AIA) in September of 2011, the “patent reform” embodied by the AIA has been slowly rolling out. In fact, the bulk of the truly significant changes to patent law are still to come. These changes include the change over to the first inventor to file model in March of 2013, and the kick off of the new post grant patent proceedings next month. With so much change on the immediate horizon it would seem premature to consider further changes to patent law until the last round has had time to take effect. 

Evidently at least one Congressman feels that the AIA does not go far enough to combat frivolous “troll” lawsuits. Congressman Defazio of Oregon is sponsoring a bill entitled “Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012.” The bill proposes that the costs (including attorney fees) of patent lawsuits relating to hardware and software should be recoverable from the Patentee should the court find that the Patentee did not have a reasonable likelihood of succeeding on the merits. (bill here)

Interestingly, the bill offers a fairly expansive definition of software as  “any process that could be…

Continue Reading New House Bill Targets Software Patent Litigation

New PTAB Rules Imminent

The August 16 deadline is fast approaching for the USPTO issuance of the final rules to implement the new patent validity trials of the Patent Trial & Appeal Board (PTAB). The good news is that the USPTO is rumored to be ahead of schedule. In fact, the rule packages are expected…

Claim-by-Claim Application of RLP Standard a Problem for Patent Challengers in Late Stage, Parallel Litigation 

As the era of Inter Partes Patent Reexamination (IPX) draws to a close, recent third party requesters are finding the the new standard for initiating IPX to be quite problematic. The higher standard, has led to a greater percentage of partial and full IPX denials.

A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners). Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.
Continue Reading Higher Patent Reexamination Threshold Suffers from SNQ Hangover

Working Patent Reexamination Developments Into the Appeal Record

Previously, I discussed how an appellant sought relief at the CAFC from an earlier Markman Order under Fed. R. Civ. P. 60(b). The Appellant argued on appeal that a recently concluded ex parte patent reexamination of the patent at issue constituted new evidence requiring relief from the earlier decision. The appellant theorized that the USPTO’s analysis as to claim scope should carry significant weight, and were contrary to the court’s earlier Markman and SJ findings. While the CAFC accepted the argument under Rule 60, they ultimately found for the Appellee.

Recently, yet another appeal rule was leveraged to inform the CAFC of USPTO findings in patent reexamination.
Continue Reading Getting the CAFC to Take Note of Your Patent Reexamination

USPTO Issues Final Rules on Pre-Issuance Submissions

Yesterday the USPTO issued the Final Rules for implementing the new pre-issuance submission component of the America Invents Act, entitled: Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act (here). The new pre-issuance provisions will take effect on September 16, 2012 and apply to all applications filed before, on, or after that date.

Minor changes were made to the formal requirements for these submissions as originally proposed, however, the substance of the proposed provisions was not altered in any significant regard with the exception of the applicability to reissue applications. Pre-issuance submissions will not apply to reissue applications as the USPTO has taken the position that patent reissue is a post-issuance proceeding (the same holds true for patent reexamination). Instead, the Protest provisions (37 C.F.R. § 1.291) will provide a similar mechanism for patent reissue.

The timing of the submission must comply with the following conditions:…
Continue Reading USPTO Issues Final Rules on Pre-Grant Information Submissions by Third Parties

Will Contesting Parties Embrace the New Post Grant Settlement Provision?

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 (TPCBMP) upon joint request of the parties. (cf. terminating an inter partes patent reexamination by operation of estoppel).

Certainly, the USPTO would greatly benefit from the ability to terminate post grant patent proceedings. This is because agency resources could moved away from proceedings that are no longer commercially relevant (as to the present parties) to those newly initiated. In this way, the USPTO would operate in much the same way as a court, no longer being responsible for continuing the patentability proceeding on behalf of the public.

But, will contesting parties embrace the new provision as written?…

Continue Reading Settling Post Grant Patent Proceedings

Contingency Model Undermined by New USPTO Post Grant Proceedings

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)

NPEs team up with law firms, at little to no cost, to launch patent assertion campaigns against entire industries. This profiteerring business model has lead to a significant proliferation of patent infringement suits in the last decade. As litigating a patent infringement suit can take years, and cost millions of dollars, a counter-suit for settlement leverage is not possible. Coupled with the fact that some plaintiff friendly jurisdictions like the Eastern District of Texas (EDTX) routinely return damage verdicts in the tens (if not hundreds) of millions of dollars, most defendants will settle relatively quickly for significant sums of money. For this reason, contingency relationships for even a single, seemingly weak patent are almost always worthwhile for law firms. Whether or not the patent is invalidated years down the road by one of a multitude of defendants does not detract from the easy, short term profits.

But the NPE landscape will forever change on September 16, 2012…

Continue Reading USPTO to Break Patent Troll Business Model in September?

USPTO Explains Appeal Fee Setting

The America Invents Act (AIA), Section 10 provides fee setting authority to the USPTO. As a result, the Office has been busy preparing new fee proposals that will take effect in early 2013. For example, the new USPTO fee setting authority permits the USPTO to revise the fees set by…