Scott McKeown

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Aqua Products Hoists PTAB Critics by Their Own Petard

SAS Institute To Send Patent Owners Screaming Into the Night?

The Supreme Court will get a heavy dose of the PTAB on November 27th. That is the day the High Court will hear oral arguments in both the Oil States and SAS Institute appeals. While almost all of the focus to date has been on Oil States, the case that is likely to have the biggest impact on the PTAB is SAS.

As a reminder, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA).  That is, if the PTAB finds that at least one claim is demonstrated as reasonably likely to be proven (RLP) unpatentable, the PTAB should institute an IPR trial for all petitioned claims. As of today, if a petitioner challenges, say claims 1-10 of a patent, the PTAB assesses each claim as to the RLP standard.  So, if the PTAB is not satisfied as to claims 5-6 of claims 1-10, trial would only go forward on claims 1-4 and 7-10.

If SAS is successful on appeal, PTAB trials would go forward on all claims as long as a single claim of the petition was deemed to meet the RLP standard. This would be a significant change to PTAB trial practice with unfortunate consequences for Patent Owners.
Continue Reading SAS Institute & The PTAB: Be Afraid Patent Owners

October PTAB CLE

A reminder that an exciting PTAB related CLE program is a week away. Don’t miss the Chicago-Kent College of Law’s Power of the PTAB: The New Authority in Patent Law on Friday October 20th. (agenda below)

Part I: Navigating the PTAB

8:35–9:35 am

Reasonable Error Correction or Death Squads — Is the PTAB’s Invalidation Rate Too High or Just Right?

Moderator: Paul Henkelmann (Fitch Even)

Speakers: Alison Baldwin (McDonnell Boehnen Hulbert & Berghoff LLP), David Killough (Microsoft); Jay Knobloch (Trading Technologies); Daniel Ravicher (Miami); David Schwartz (Northwestern)

9:35–10:35 am

PTAB Repetition — Multiple, Duplicative, and Sequential PTAB Challenges

Moderator: Erick Palmer (Mayer Brown)

Speakers: Christen Dubois (Facebook); Joshua Goldberg (Finnegan); Judge William Saindon (PTAB); Mark Stewart (Eli Lilly); Jonathan Stroud (Unified Patents)

10:35–10:50 am

Coffee break

10:50–11:05 am

Interlude: Presentation by the Chicago-Kent Patent Hub

11:05 am–12:05 pm

Convincing the PTAB — Developing and Presenting Evidence in PTAB Proceedings

Moderator: Steven Jedlinski (Holland & Knight)

Speakers: Judge Chris Kaiser (PTAB); Scott McKeown (Ropes & Gray); Judge William Saindon (PTAB); Melissa Wasserman (Texas)

12:05–12:10 pm

Announcement of the Chicago-Kent Journal of Intellectual Property as the official publication of the PTAB Bar Association.
Continue Reading The Power of the PTAB Next Friday

CAFC Considers Justiciability of PTAB Appeal Issues

Review of PTAB Trial Orders Debated by CAFC

In recent weeks, the CAFC has twice considered whether or not the trial orders of the USPTO's Patent Trial & Appeal Board (PTAB) become appealable once a final written decision is issued. First, on November 3, 2014, the CAFC heard arguments directed to this issue in In re Cuozzo Speed Technologies LLC. The Cuozzo appeal stemmed from the very first Inter Partes Review (IPR) ever filed. Cuozzo appealed the Board's determination of unpatentability and argued that the IPR never should have been instituted in the first place. This past Wednesday in an appeal stemming from  the very first CBM filed, Versata Development Group v. SAP America, Inc, a similar threshold argument was made to the Court.

Can the CAFC consider an otherwise nonappealable PTAB trial order in reviewing a final written decision?

Aqua Products: A Gift to the PTAB

Yesterday I explained why In re Aqua Products would not result in PTAB Motions to Amend being any more attractive or ultimately successful. This is because Motions to Amend are rarely advisable in litigation scenarios given intervening rights. And even where viable, such infringement-inspired amendments are almost always too incremental in nature to distinguish over the art. That said, Aqua Products is an absolute game changer for the agency itself.

With the burden of patentability now offloaded from the Motion to Amend, such motions can now be entered (i.e., granted) before reaching the ultimate question of whether or not the amended claim is actually patentable. As upward of 60% of pre-Aqua motions failed on patentability grounds, one can expect that the grant rate of such motions to now exceed 60%.

For this reason, Aqua Products is manna from heaven for the agency.
Continue Reading Aqua Products Hoists PTAB Critics by Their Own Petard

PTAB Formally Appoints Vice Chief & Board Executive

Federal Circuit Flips Burden in PTAB Motion to Amend

For PTAB practitioners, the en banc decision in In re Aqua Products is a complete non-event. While the decision has been embraced as a net positive for Patentees, practically speaking, it will not move the needle on amending at the PTAB.

Aqua Products held that it is improper for the PTAB to place the burden of persuasion on the Patentee relative to the patentability of new/amended claims. Going forward, this burden of persuasion will rest with Petitioners (as it does for originally challenged claims 35 USC § 316(e)). (here)

While this shift may be seen as a positive for Patentees, the difficulties/unpopularity in amending at the PTAB never had anything to do with an improper shifting of the burden of patentability.Continue Reading In Re Aqua Products: Much Ado About Nothing

PTAB Institution Rate Dips Into 60% Range

Past Three Months of PTAB Statistics Tell A Different Story


Last week, I explained that the institution rate of PTAB trials in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings had dropped, on average, by roughly 10 percentage points in the past year. However, the averaging of 2012-14 proceedings does not tell the current story. Whether you agree with my explanation of this recent phenomena as a reflection of poor petition quality or not, there is clearly a heightened focus on the preliminary proceeding (i.e., petition stage).

What was left out of last week’s post was a snap shot of what is actually going on at the PTAB  today— the effective institution rate right now.

Broadest Reasonable Does not Mean Broadest Possible!

The USPTO applies a broadest reasonable claim interpretation (BRI) to patents and patent applications. The abbreviation “BRI” is often used to reference the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, a complete BRI analysis is often mistaken by overemphasis of the “BRI” mantra. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, a proper  broadest reasonable interpretation of the claims is one that is consistent with the specification of the subject application/patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required contextual consideration of the specification.

In 2010, the CAFC strongly cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Last week, the agency was reversed again for failing to conform the “reasonableness” determination with the scope of the patent specification.
Continue Reading Patent Prosecutor’s Toolbox: The Better Half of BRI

September Webinar to Focus on Expected Changes to PTAB Practice

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday September 28th @12:30 (EST). The September webinar is entitled: The Evolution of PTAB Trial Practice (speakers: Scott McKeown & Gaby Higgins). As the title suggests, the webinar will cover the…

Octane Fitness To Spur Senate Patent Reform Bill?

Judiciary Simplifies Patent Reform Debate.....Again


Although promised on Monday, the world still awaits the highly anticipated Senate patent reform bill. As pointed out previously, a major sticking point is the "fee shifting" (a.k.a. loser pays) aspect of the bill. The Senate has seemingly struggled to balance the needs of innovators that enforce patents with the need to rein in patent troll profiteering. That struggle may have been mooted today by the Supreme Court's decision in Octane Fitness LLC v. Icon Health & Fitness, Inc. (here)

Oil States/CAFC to Unravel “Litigation” Premise

Sovereign immunity from proceedings of the Patent Trial & Appeal Board (PTAB) has become inextricably linked with the Oil States debate now before the Supreme Court. That is, the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity at the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit.

In Oil States, the “trial argument” is made to distinguish IPR proceedings from patent reexamination. It is argued that because an IPR is more trial-like compared to the earlier, examination based system, a jury trial is now required, consistent with the 7th Amendment.

In the sovereign immunity context, immunity applies if an administrative proceeding is similar to civil litigation. Fed. Mar. Comm’n v. S.C. State Ports Auth., 535 U.S. 743 (2002). But, some judges of the CAFC have already signaled a willingness to unravel this “IPR is a trial” premise, and it is my expectation that Oil States will follow suit.
Continue Reading Sovereign Immunity at the PTAB a Temporary Phenomena?

Boardside Chat Tomorrow

Tomorrow, Tuesday, September 12, 2017 from 12-1 p.m. ET the Patent Trial & Appeal Board (PTAB) will conduct a special “Boardside Chat” in which representatives from AIPLA, IPO, ABA, PTAB Bar Association, and Federal Circuit Bar Association will interview the Chief Judge on the 5th year anniversary of the PTAB.

The program…

PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent

As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.”

The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the USPTO assesses indefiniteness pursuant to the Federal Circuit’s guidance in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

While some have expressed shock at the PTAB pronouncing a different standard than that expressed in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), this is just a restatement of the Board’s status quo since the Packard decision. (It is not exactly shocking that the Board is following the guidance of its reviewing court).

The more interesting issue is whether the Court’s reasoning in Packard is equally applicable to AIA trial proceedings?
Continue Reading New PTAB Precedent Endorses In re Packard….But For How Long?