Scott McKeown

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Patent Bar Required or Not?

The USPTO continues to work to fashion rules to implement the new post grant proceedings of the Leahy-Smith America Invents Act (AIA). One can only speculate that the new “trial” like, post grant proceedings of the AIA will be closely modeled on the procedures of existing patent interference practice. This is because the USPTO, aside from patent interference, has limited experience in presiding over the types of contested proceedings contemplated by Inter Partes Review (IPR) and Post Grant Review (PGR).

In patent interferences, the Trial Division of the existing Board of Patent Appeals & Interferences (BPAI) conducts proceedings based upon a Standing Order. Patent interference requires an in depth knowledge of a difficult and relatively obscure aspect of patent law. As such, the attorneys who conduct these proceedings are seldom general litigators, but almost always registered patent attorneys with substantial experience in handling interferences–i.e., members of “the interference bar.”  However, such is not required.

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Continue Reading General Litigators to Practice Before the New Patent Trial & Appeal Board?

Group 2 Rule Making Effort in Final Stages

Since the enactment of the Leahy-Smith America Invents Act (AIA), and even before, the USPTO has been busy fashioning new rules to implement the various provisions of the legislation. The USPTO has been aggressively seeking public comment prior to publishing the proposed new rule notices due to the significant amount of changes introduced by the legislation and the short time time frame.

The Office has grouped the various rule packages. Group 1 related to rules that needed to be provided immediately. Group 2 is directed to provisions that will become available 12 months after enactment. These proposed rules are expected to be introduced in late December or early January.
Continue Reading USPTO Finalizing Post Grant Rule Packages

Proper Petition Practice Especially Critical in Patent Reexamination

In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for relief is by way of petition. Indeed, the MPEP states such explicitly. MPEP 706.07(c). Yet, not all examination/reexamination disputes are so clear cut. (See earlier discussion on ex parte SNQ review process here)

The distinction between appealable vs. petitionable disputes is especially critical in post grant proceedings such as patent reexamination. This is because failure to appreciate the distinction between the two could potentially forfeit substantive patent rights.…

Continue Reading When to Petition/Appeal at the USPTO?

Parallel Litigation Stayed in View of “Tremendous” Reexamination Claim Count

When faced with the assertion of a patent of dubious validity, prospective defendants increasingly resort to patent patent reexamination. Patent reexamination can be a cost effective mechanism to dissolve the dispute, or at the very least, shift some leverage to the prospective defendant relative to willfulness, intervening rights, claim construction, etc.

Once a suit is filed, the opportunity to obtain a stay of an ongoing district court infringement action pending a parallel patent reexamination is a major benefit of the USPTO proceeding. Courts have the inherent power to manage their dockets, including the authority to stay patent infringement litigation pending the conclusion of a USPTO patent reexamination. A stay of the court proceeding enables defendants to halt, or altogether avoid cost prohibitive litigation discovery, which can be rather lengthy and painful.

For this reason, patent reexamination parallel to a district court is often initiated in an attempt to stay the more cost prohibitive court proceeding. In deciding whether or not to stay the court proceeding the courts look to many factors. (See factor based analysis here) Perceptions as to whether or not a stay is warranted will vary significantly, even though the same analysis is performed by each judge/court.  Attitudes vary across courts (ITC v. EDTX, v NDCA), even amongst judges of the same court.

Often times, the conduct of the litigating parties can be another factor impacting the court’s analysis.
Continue Reading 500 New Claims in Patent Reexamination Backfire on Plaintiff

Halloween Webinar to Discuss AIA Implementation Plans & Progress

Next Monday, the USPTO will host a free public webinar at 1PM to discuss the America Invents Act (AIA). USPTO participants in the webinar will outline the agency’s implementation plans, and answer a selection of questions submitted during the session. Questions should be submitted in …

Failed Inter Partes Patent Reexamination Challenges to be Resurrected?

When Congress provided for inter partes patent reexamination (IPX) in the 1999 American Inventors Protection Act, estoppel provisions were fashioned to prevent abuse of the new, post grant mechanism.

The IPX estoppel provisions are codified as 35 U.S.C. § 315 (c) and § 317 (b). Section 315(c) prevents a requester in IPX from pursuing failed arguments in a district court, correspondingly, 317 (b) prevents a requester that has failed to prove invalidity in an IPX, or at the district court from requesting a second IPX on any issue that was raised or could have been raised in the failed proceeding.

Interestingly, 317 (b) precludes a second IPX (outside of very limited circumstances, “newly discovered” art.). Yet, with IPX being replaced by Inter Partes Review (IPR) in less than a year, have failed IPX challengers been given an unexpected reprieve from the estoppel impact of 317(b)?
Continue Reading The Estoppel Disconnect of Inter Partes Review

District Court Stay Pending Patent Reexamination By-passed Via ITC

The initiation of patent reexamination parallel to a district court patent infringement proceeding has become quite routine over the past few years. The use of such a parallel reexamination proceeding offers many benefits to defendants, such as helping prove objectively reasonable behavior to avoid a finding of willful infringement, creating a further prosecution history estoppel/disclaimer record for Markman purposes, establishing an intervening rights defense, or demonstrating materiality of a reference underlying an inequitable conduct defense. Yet, one of the most common defendant uses of a parallel patent reexamination is the ability to shut down a district court proceeding altogether in favor of USPTO reexamination proceedings.

Stays pending patent reexamination are granted quite routinely, albeit inconsistently. Depending upon the court, a case may be stayed based upon the mere filing of a request for reexamination, or upon grant even though such requests are granted in roughly 95% of cases. Likewise, once a case is stayed, serial requests for patent reexamination, if tolerated by the judge, can ensure that the validity case remains with the USPTO indefinitely.

So, for those plaintiffs subject to a stay that are being damaged by continued infringement, aside from battling the a continuous stream of patent reexaminations requests for years on end, is there a way to resume the litigation battle without waiting for the reexamination(s) to end?
Continue Reading Un-Staying Litigation Despite Ongoing Patent Reexamination

patent reissue oathMost practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception.  I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.

In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.

Continue Reading Defects in Patent Reissue Oaths Inefficiently Cured

PGR Window Anomaly to Encourage Early Litigation?

Post Grant Review (PGR) is limited to patents maturing from applications filed on or after March 16, 2013 (note, the exception for business method patents, Sec. 18 of the AIA).  Of course, it will take several years for such patents to issue from the USPTO. Thus, practically speaking, PGR will not be an option for third parties seeking to challenge the validity of an issued patent until at least the second half of this decade. Nevertheless, the PGR statutes will have a significant impact on third party options and parallel litigation strategy going forward.

As a reminder, patents eligible for PGR that are not business method patents, are those that are within 9 months of issuance, or re-issuance for broadening reissues (§ 321 (c)).

When fashioning the Inter Partes Review (IPR) statutes, Congress mandated that IPR may not be requested until the later of 9 months from patent issuance, or if PGR is instituted the date of termination (§ 311(c)). This timing limit is meant to ensure that PGR and IPR are not conducted in parallel. IPR, unlike PGR,  becomes available for all patents next September 16, 2012.

So, for newly issued patents that will not be eligible for PGR over the next few years, do requesters still have to wait 9 months before filing a request for IPR?
Continue Reading Post Grant Dead Zone Coming Soon

Filing Fees to Increase Substantially

From start to finish, the cost of an inter partes patent reexamination (IPX) proceeding is estimated to be $278K by the 2011 AIPLA Economic Survey. This figure includes all expenses from the time of filing the request to a decision of the Board of Patent Appeals & Interferences (BPAI). The government filing fee for requesting inter partes patent reexamination is $8800.

The America Invents Act (AIA) introduces several new inter partes proceedings for the purposes of challenging the validity of a U.S. Patent. The first, Inter Partes Review (IPR), will be available on September 16, 2012 and will replace IPX. The second, Post Grant Review (PGR) will also be available on September 16, 2012 to challenge certain business method patents. Thereafter, PGR may be used to challenge (within a 9 month window after issuance) a patent filed on or after March 16, 2013.

As discussed yesterday, IPR will provide a significant improvement over IPX with respect to overall pendency delays. PGR will follow the same general timeline. In addition to the improvement in pendency, both IPR and PGR will provide for limited discovery, protective orders, oral hearings, settlement, and the management of the proceedings by a three person Administrative Patent Judge (APJ) panel of the new Patent Trial & Appeal Board (PTAB). But, what is all of this going to cost filers?…

Continue Reading How Much Will Post Grant Proceedings at the USPTO Cost?