Scott McKeown

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ITC Mandate Provides Safe Haven for Troll Abuse?

With injunctions harder to come by, and some district courts staying proceedings upon the mere filing of a patent reexamination, it is not surprising that non-practicing entities (NPEs) have been heading to the ITC (and, in the process ding-patent-reexamination”>This is a further benefit for NPEs.

Recently, a motion to stay an ITC proceeding pending patent reexamination was again considered by the agency in Certain Blue Ray Disc Players.…

Continue Reading ITC Action to Continue Despite Advancing USPTO Reexamination

Can Declaration Evidence be Considered “Written Comments”

Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically speaking, the lack of RCE practice in patent reexamination creates a limited prosecution window relative to the prosecution of patent applications. For this reason, submission of declaration evidence by Patentees under 37 CFR § 1.131 and/or 37 CFR § 1.132 is fairly routine in patent reexamination proceedings.

For Requesters, it is critical to respond to the declaration evidence of the Patentee in kind, especially as the Requester will be estopped from advancing failed arguments of the IPX in a district court or subsequent USPTO proceeding.

Despite this well established, declaration practice in IPX, a recent reexamination dispute before the CAFC questions the statutory propriety of Requester declaration submissions.
Continue Reading CAFC Probes Statutory Basis For Third Party Declaration Filings in Patent Reexamination

Upcoming CLE

For those looking for some CLE credit this week, I, along with Mr. Andrei Iancu, Irell & Manella; and Mr. John Scott, QUALCOMM, Inc., will be presenting on the IPO Chat Channel (Wednesday, April 18th) Intervening Rights in Patent Litigation.

The program will look at the Marine Polymer case as well as…

Discovery Practice in Post Grant Patent Proceedings

In patent litigation before the federal district courts and the International Trade Commission (ITC), parties are obligated to preserve and prevent the destruction of potentially relevant information. This duty often commences as soon as litigation is reasonably foreseeable. Many courts also extend the duty to counsel for the litigants and require that counsel take affirmative steps to ensure that their clients are aware of, and take steps to comply with, the duty to preserve documents. As a result, counsel typically consult with their clients regarding this duty and provide their clients with a “litigation hold” letter that explains the measures the client should undertake to preserve potentially relevant information.

The new post grant review (PGR) and inter partes review (IPR) procedures created by the America Invents Act are adversarial proceedings in which the parties may take limited discovery from one another. The question arises: are the parties to PGR and IPR proceedings under a duty to preserve potentially relevant information?
Continue Reading Prepping for Post Grant Discovery Before the Patent Trial & Appeal Board

SNQ Analysis Not Explicit in New Post Grant Standards

As discussed earlier in the week, a petitioner must demonstrate  a reasonable likelihood of prevailing (RLP) in order to successfully initiate an inter partes review. As of September 16, 2011, this standard has also been applied in assessing requests for inter partes patent reexamination. In arriving at a new standard, Congress hoped to address criticisms that the previously applied substantial new question of patentability (SNQ) standard was too low, and fostered harassment of Patentees.

Patently-O has reported a recent petition decision that comments on the new RLP test, and whether or not the new threshold would necessarily exclude requests for IPX that would fail the old SNQ test.…

Continue Reading Will Post Grant Patent Proceedings Revisit Failed Arguments?

post grant standardsPost Grant Review Has a Higher Threshold Than Inter Partes Review

The threshold necessary for initiating an Inter Partes Review (IPR) is prescribed by statute as a reasonable likelihood that a petitioner will prevail (RLP) with respect to at least one challenged claim. On the other hand, the threshold necessary to trigger a Post Grant Review (PGR) is prescribed by statute as more likely than not that a challenged claim is unpatentable. Absent review of the legislative history, it is far from straightforward as to the difference in these standards. Fortunately, the PTO has issued an explanation clarifying the difference.
Continue Reading Different Thresholds for New Post Grant Proceedings

Commentary on Notice of Proposed Rules to Implement Post Grant Patent Proceedings Due on Monday

The deadlines for submitting comments to the USPTO on the Group 2 rule making proposals (i.e., post grant patent proceedings) are next Monday and Tuesday, April 9-10th. (depending upon the publication date)

While the USPTO should be applauded for their …

Practitioners Preoccupied with Discovery Opportunities

Generally speaking, “discovery” is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Of course, discovery is not permitted in patent reexamination proceedings because patent reexamination does not qualify as a “contested proceeding” in accordance with 35 U.S.C. §§ 23-24.

The lack of discovery in patent reexamination was often cited by Patentees as an example of the inequities of patent reexamination. For example, Patentees are unable to confirm the given identity of a real-party-in-interest identified in a request for inter partes patent reexamination, which could aid certain unscrupulous filers to dodge potential estoppel effects. Likewise, if the Patentee may be unable to obtain and present certain secondary indicia of non-obviousness (i.e., copying, commercial success of an infringing product, etc) as the third party requester may be the best source of such information.

With the passage of the America Invents Act (AIA) comes new, contested proceedings to challenge patent validity at the USPTO. These proceedings, Post Grant Review (PGR) and Inter Partes Review (IPR) will be available as of September 16, 2012. The proceedings will be conducted by the new Patent Trial & Appeal Board (PTAB) and will include “limited discovery.”

In their proposed rules to implement these new, contested proceedings, the USPTO has fleshed out the meaning of “limited discovery.” …

Continue Reading Discovery Practices Before the Patent Trial & Appeal Board

Added Rebuttal Opportunity of Limited Value to Patentees

When faced with a third party request for either ex parte patent (EXP) reexamination or inter partes patent (IPX) reexamination, a Patentee must sit helplessly by and await the determination of the USPTO to grant or deny the request. That is to say, the Patentee may not file any argumentation prior to the determination of the USPTO to institute a reexamination proceeding. For this reason, as well as the relatively low Substantial New Question (SNQ) threshold set for patent reexaminations (although no longer applicable to IPX), the grant rates for both EXP and IPX have hovered around 93%.

In order to address the absence of input from Patentees, and perhaps to a lesser extent the high grant rate, the new post grant proceedings of the America Invents Act (AIA) require higher thresholds (reasonable likelihood standard for Inter Partes Review (IPR) and more likely that not standard for Post Grant Review (PGR)). In addition, prior to ordering a trial in either of the new proceedings, Patentees will now have the option of submitting a preliminary response.

Yet, while on paper the filing of a preliminary response may seem to foster a more balanced system, in practice, such filings may be very rare.…

Continue Reading Will Patentees File Preliminary Responses to Post Grant Challenges?

Speedy, One Sided Estoppel to Force Judicial Deference

The estoppel provisions of Post Grant Review (PGR) and Inter Partes Review (IPR) are markedly different than those in existence today for Inter Partes Reexamination (IPX). Most importantly, PGR/IPR estoppel attaches upon a written determination of the PTAB, and a final, non-appealable decision of a court will not force the USPTO to vacate a parallel IPR/PGR proceeding. These estoppel features are expected to be a significant driver going forward in motions to stay parallel infringement actions.

Currently, IPX requires all appeals to be exhausted before estoppel can attach. In practice, this means that there is (roughly speaking) a 6 year journey through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). Starting September 16 2012, IPX will be replaced with IPR. Estoppel in an IPR proceeding will be effective within 12-18 months from the initiation of the proceeding. This is because IPR/PGR proceedings must be concluded in this time frame by statutory mandate.

The speed of IPR/PGR proceedings relative to court proceedings will certainly undermine plaintiff oppositions to a motion to stay. Often times, the strongest plaintiff argument in opposing a stay is that the significant USPTO delay will be prejudicial to the plaintiff.  However, perhaps more compelling will be the shifting of the prejudice argument to the side of the defendant.
Continue Reading AIA Changes to Greatly Increase Stays of District Court Actions?