Scott McKeown

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Reach of Estoppel More of a Concern After AIA

The application of statutory estoppel to patent challengers was a concept first introduced in 1999 with the advent of inter partes patent reexamination (IPX). Initially, many sensationalized the estoppel effect of IPX together with the unpredictability of the reexamination process as justification to avoid use of the new proceeding. Over the years, due to the consistent performance of the USPTO’s Central Reexamination Unit (CRU), and perhaps to a greater extent, the 5-7 year duration of a fully contested IPX, patent challengers realized the estoppel risk to be an insignificant factor for most patent disputes (since most conclude before estoppel can attach). For this reason, the estoppel mechanics as to real-parties-in-interest and privies were infrequently considered by the courts, or USPTO.

Going forward, estoppel may once again become a concern for patent challengers under the new proceedings of the America Invents Act (AIA).

Inter Partes Review (IPR), Post Grant Review (PGR), and the Transitional Program for Covered Business Method Patents (TPCBMP), all have their own estoppel provisions. In view of the fact that all of these proceedings are designed to end within 12 months, estoppel is now a more clear and present danger. As such, it is now more important than ever for patent challengers to understand the meaning of “real party-in-interest” and “privies.”…

Continue Reading Real-Party-in-Interest & Privies Before the USPTO

BPAI Considering Expanding Per Curiam Decision Practices to Combat Backlog

At this week’s AIPLA Spring Meeting, Chief Judge Smith of the Board of Patent Appeals & Interferences (BPAI) provided an update on the Board’s staffing and productivity initiatives. As shown in his slides (here), the backlog of appeals continues to grow toward 30,000 cases. 

BPAIAs a result of the backlog, and the new trial mechanisms of the America Invents Act, the Board has increased hiring. Since hiring alone will not be enough to keep up with the workload, the Board is also contemplating expansion of the per curiam decision practice.…

Continue Reading BPAI Considers Expanding Per Curiam Decision Practice

In re Youman Faults BPAI Recapture Analysis

Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).

As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.

The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.

In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (“overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test. …

Continue Reading CAFC Again Recalibrates Recapture Doctrine

Patentable Subject Matter Challenge Advanced in Patent Reexamination

This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus. The decision held that certain patents of Prometheus Laboratories were directed to non-statutory subject matter. Specifically, the Court found the Prometheus patents, claiming methods of administering a blood test to calibrate necessary drug dosages in patients suffering from autoimmune diseases, to be directed to laws of nature.

The decision was an important one for the bio/pharma community, especially as it relates to the 101 analysis currently before the CAFC in the Myriad gene patent dispute.

However, when it comes to such patentable subject matter challenges under 35 U.S.C. § 101, there is currently no vehicle for a patent challenger to pursue such arguments before the USPTO. This is because patent reexamination is limited to patents and printed publications. Yet, challengers will occassionally test the bounds of the USPTO’s patience in this regard by infusing requests with extraneous commentary. …

Continue Reading Prometheus Based Patent Reexamination Requests?

Item of Information Limit Accounts for Practical Realities

Supplemental Examination (SE) is a mechanism of the AIA that is designed to effectively cure inequitable conduct via a new post grant proceeding of the USPTO. This mechanism, effective September 16, 2012 will be available to all issued patents.

In operation, SE allows a Patentee to submit very detailed explanations of potential issues that may render the patent invalid under an inequitable conduct theory. Upon submission of Substantial New Questions of patentability (SNQs) detailing such potential defects, the Office will reconsider or correct such information; that is to say the Office will perform a “supplemental examination.” Once such issues are considered, any patent issuing as a result of the SE would be free of inequitable conduct charges based on the same issues considered in the SE.

In the proposed rules to implement SE, the USPTO has limited the number of “items of information” for presenting a SNQ to 10. Public comments directed to this implementation detail have been largely negative.

A few days back, the Director more or less made clear that this limitation will remain in the Final rules.…
Continue Reading USPTO Justifies Supplemental Examination Guidelines

Transitional Program for Covered Business Method Patents (TPCBMP)

The Transitional Program for Covered Business Method Patents, (TPCBMP) will be implemented by the USPTO on September 16, 2012. The new post grant option essentially provides that any “covered business method patent” may be challenged under the same procedures and standards applied in Post Grant Review (PGR) proceedings. The TPCBMP will sunset 8 years from implementation, hence the “transitional” label.

The major differences between PGR and TPCBMP relate to patent eligibility and estoppel.

With respect to estoppel, PGR estoppel attaches to any ground that the petitioner raised, or reasonably could have raised during the PGR. On the other hand, TPCBMP estoppel is only limited to issues actually raised during the proceeding.

The legislation defines a “covered business method patent” in general terms, as follows:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

As can be appreciated, the definition of “covered business method patent” is of great interest to some of the leading U.S. innovators. Recently, the Senator (Schumer D-NY) that introduced the TPCBMP to the patent reform legislation urged the USPTO to adopt a very liberal definition of “covered business method patent.”…

Continue Reading Senator Urges USPTO To Tackle Software & E-commerce Patents

Tax Strategy Patent Reexamination Continues Despite AIA Provision

Back in January of 2011, the Director of the USPTO initiated reexamination of U.S. Patent 6,567,790 (here), which claims a method of minimizing transfer tax liability. In 2007, the ‘790 Patent was asserted against a corporate officer of Aetna Inc, the case was settled for…

PTAB To Exercise Discretion Relative to Non-registered Practitioners

The new post grant patent proceedings of the America Invents Act (AIA) are adjudicative in nature. That is to say, Derivation, Inter Partes Review (IPR) and Post Grant Review (PGR) will be conducted as trials before the Patent Trial & Appeal Board (PTAB). Patent examiners will no longer referee inter partes disputes at the USPTO (outside of legacy inter partes reexamination proceedings)

While IPR and PGR will include many litigation style mechanisms, such as limited discovery, protective orders, motions, etc, these proceedings will also embrace traditional functions of patent application prosecution. (e.g., claim amending and engineering/scientific analysis). As noted previously, non-registered practitioners can, in limited circumstances, be permitted to appear before the current Board of Patent Appeals & Interferences (BPAI) on a pro hac vice basis. The PTAB will adopt this practice. Rule 42.10(c)

Recently, Chief Judge Smith explained the standard that will be applied to applications of non-registered practitioners by the PTAB.…

Continue Reading Pro Hac Vice Policy of the New Patent Trial & Appeal Board