Scott McKeown

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BPAI Hiring & Rule Efforts

The USPTO is now heading into the home stretch of the America Invents Act (AIA) rule making efforts. The USPTO has committed to publishing the final rules relating to the new post grant mechanisms of the AIA by August 16th, at the latest. It is expected that the agency will complete their work on the final rules in July, but, the review of the Office of Management & Budget (OMB) will delay publication another 2-3 weeks.

The final packages are not expected to vary significantly from the February NPRMs. The USPTO has commented publicly…

Continue Reading Summer Moves at the USPTO

Congress Mandates Speed, Extends Stautory Estoppel to ITC

The new post grant patent trials of the America Invents Act (AIA) are designed to provide a true alternative to patent litigation. That is to say, current patent reexamination proceedings are typically pending 4-5 years through appeal, if not longer. As a result, patent reexamination is primarily utilized as an additional litigation tool rather than the alternative to patent litigation intended by Congress. Conversely, the new AIA trial proceedings are designed to conclude, by statute, within 12-18 months of initiation.

Whether, choosing Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), or Inter Partes Review (IPR), the new proceedings will conclude relatively promptly, and estoppel will attach upon a written determination of the Patent Trial and Appeal Board (PTAB). Based on the increased speed, and estoppel result, it is expected that the new proceedings will provide a compelling basis to stay parallel infringement actions.

However, the International Trade Commission (ITC) also has a statutory mandate for expeditiously processing their docket (typically within 15 months). For this reason, the ITC is currently an “anti-stay” forum. Given the likelihood of future parallel tracks of the USPTO and ITC, will the ITC change their “anti-stay” practice to account for the post-AIA world?
Continue Reading New Post Grant Patent Trials To Derail Parallel ITC Actions?

InconsistencyA successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation may provide key evidence necessary to prevail during a Markman hearing, or offer new, non-infringement positions to defendants.

Late last month, in Kilopass Technology Inc., v. Sidense Corp (NDCA), the Court cited to seemingly inconsistent statements made by a Patentee during the patent reexamination
Continue Reading Perceived Patent Reexamination Misstep Haunts Plaintiff

CAFC Standard of Review Driven by Appeal Posture

The appeal of a rejection from the Board of Patent Appeals & Interferences (BPAI) to the Court of Appeals for the Federal Circuit (CAFC) is a relatively uncommon event in the prosecution of patent applications. This is because the cost of such an appeal is rarely advisable in light of the ability to simply request continued prosecution before the Examiner.

On the other hand, post grant proceeding appeals from the BPAI (and soon to be Patent Trial & Appeal Board (PTAB)) to the CAFC are far more commonplace. Unlike application prosecution, where virtually unlimited prosecution is possible via requests for continued examination (RCEs), neither patent reexamination nor the new post grant proceedings of the America Invents Act (AIA) permit such alternatives to appeal. Moreover, amendment of claims during these proceedings is generally disfavored as creating an intervening rights defense, and patents subject to post grant proceedings are almost always high-value assets. Accordingly, as the popularity of post grant proceedings continues to increase, so too do the number of appeals from the USPTO to the CAFC.

When considering decisions of the USPTO, the CAFC employs either a de novo standard of review or substantial evidence standard of review, as appropriate. Not surprisingly, appeals that employ the de novo standard provide a more significant opportunity for reversal than those that do not. For this reason, it is important to understand the Court’s practice in applying one standard over the other.
Continue Reading Legal Conclusions & Fact Finding, Pursuing USPTO Appeals to the CAFC

micro-entityEarlier this week, the USPTO issued a Notice of Proposed Rulemaking to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA).  If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA (in the…

Inability to Properly Examine Means-Plus-Function Claims in Patent Reexamination Creates Perplexing Result

Unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable claim interpretation. Instead, as outlined by MPEP 2181–2183, the structure and acts described in the underlying patent specification embody the statutorily mandated scope. That is to say, the structure described in the patent specification as linked to the claimed function is essentially incorporated into the claim. Absent this analysis of the specification for structural support, there can be no structural limits to the claim by which to properly compare the prior art. See MPEP 2183 (C)

Yet, for improperly supported, originally issued means-plus-function claims, a rejection pursuant to 35 U.S.C. § 112 2nd paragraph is not possible in patent reexamination. This is because such a rejection would not be based on “patents and printed publications” as mandated by the patent reexamination statutes. In other words, where a means-plus-function claim examined in patent reexamination lacks any structural support in the patent specification, the USPTO is unable to properly examine the claim. (See my 2010 post on this “Tale of Two Statutes” here)

In a decision last week, the Board of Patent Appeals & Interferences (BPAI) was faced with this statutory conundrum in the inter partes patent reexamination of U.S. Patent 6,446,045. (decision here) The ‘045 Patent is owned by Function Media L.L.C. and is currently asserted against Google Inc. (on appeal to the CAFC).

In the reexamination of the ‘045 Patent all claims were rejected in view of applied art.  However, as the BPAI found the means-plus-function claims unsupported, all of the outstanding rejections were reversed as speculative. Taking the estoppel of inter partes patent reexamination into account (35 U.S.C. § 315), did Google win or lose?…

Continue Reading BPAI Reversal of All Rejections Dooms Patent in Reexamination

House Hearing Discusses Possible Technical Amendments

During last week’s hearing before the House Judiciary Committee on the implementation status of the America Invents Act (AIA), most of the invited speakers offered particular comments/suggestions on the USPTO’s implementation efforts. Many of these comments were simply re-presentations of written comments submitted this past Spring.

Others focused on possible technical amendments to the AIA. Interestingly, former Committee Chairman James Sensenbrenner (an opponent of the original legislation) accused Committee members of devising such amendments in secret. However, this accusation was quickly dismissed by other members of the Committee who took the position that no such technical amendment exists…..yet anyway. Of course, possible technical fixes have been rumored for quite some time. (webcast here)

When it comes to post grant proceedings, there are quite a few “fixes” that are needed if the legislation is to achieve the goals of the legislature.…

Continue Reading Technical Amendment to America Invents Act

CAFC Forced to Disturb Earlier Ruling Based on More Liberal Patent Reexamination Standards

Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In some cases, an infringer that fails to prove invalidity in the courts can effectively “undo” the effect of the earlier court judgement via an ex parte patent reexamination (EXP) filing.

Back in December, the CAFC considered this “do over” tactic in the case of In re Construction Equipment. Last week, the very same procedural fact pattern presented itself to the CAFC. Once again, Judge Newman decried the potential undermining of previously settled court rulings via ex parte patent reexamination.   …

Continue Reading Judge Newman Again Questions the Constitutionality of “Do Over” Patent Reexamination

House Hearing Wednesday May 16th

Tomorrow, the House Judiciary Committee will hold a hearing on the Implementation of the America Invents Act at 10AM. The hearing will be webcast, information is found (here).

The agenda provides a list of speakers, some of which will discuss the implementation of the new post grant proceedings.