Business Method Patent Challenge

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So Let It Be Written, So Let It Be Done…Your Patent Portfolio That Is

Two weeks back I discussed the “patentee estoppel” impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial proceeding of the Patent Trial & Appeal Board (PTAB), the Patentee is thereafter precluded from taking an inconsistent action before the USPTO. This preclusion includes, obtaining in any patent, a claim that is not patentably distinct from the finally refused or cancelled claim.

In the earlier post, I discussed how the final refusal or cancellation of a patent claim could have a devastating impact on active continuation patent application portfolios. This is because when a parent patent has a broad, generic claim cancelled or refused in a post grant trial of the PTAB, the Patentee is estopped from pursuing a continuation (or reissue) application presenting claims of indistinct scope. Absent a proactive strategy, such a result would significantly undermine the investment in continuation application portfolios of large patent filers.

Perhaps even more disturbing, is the infectious nature of this estoppel relative to other, issued patents of an unsuccessful Patentee.
Continue Reading Creeping Death….The Infectious Estoppel Impact of PTAB Validity Trials

First Covered Business Method (CBM) Challenges & Inter Partes Review Petitions Filed

The new Patent Trial & Appeal Board (PTAB) web portal, known as the Patent Review Processing System (PRPS) went live at 12:01AM Sunday morning. At the time of this writing, 7 petitions for Inter Partes Review (IPR) have been filed, as well as…

First Inter Partes Review & Covered Business Method Filings Headed to the USPTO

The USPTO’s Patent Trial & Appeal Board (PTAB) opens its doors for business this coming Monday. As a reminder, submissions to the PTAB will need to be filed via the Patent Review Processing System (PRPS). The web portal system will go live…

Continuation Applications to be Collateral Damage to PTAB Proceedings?

The new patent validity trials of the Patent Trial & Appeal Board (PTAB), Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), and Inter Partes Review (IPR) introduce a new layer of estoppel for Patentees. This estoppel, once triggered by claim cancellation or refusal by the Patent Trial & Appeal Board (PTAB), could operate to effectively forfeit a Patentee’s continuation application portfolio.

The danger is significant as it is common practice for many Patentees to maintain continuation patent applications long after the issuance of a first patent. The pending continuation applications allow Patentees to adapt/refine their claims to changing products of the marketplace such as when competitors attempts to “design around” the claims of the initially issued patent. In this way, a robust continuation portfolio serves as a further hedge against infringement of the base patent. Indeed, for many large stakeholders, continuation patent application portfolios constitute a major investment.

Once a patent is challenged in a petition for IPR, PGR, or TPCBMP, what can a patentee do to protect their investment in continuation patent applications?

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Continue Reading Post Grant Patent Challenges To Threaten Continuation Portfolios

Stafford Legal Webinar on PTAB Practice

Next week, the Patent Trial & Appeal Board (PTAB) will begin to accept petitions for the post grant patent validity trials of the America Invents Act (AIA). For those needing a refresher, or crash course in the new proceedings, next Tuesday September 18th Stafford legal will host a 90-minute…

Patentees Faced with a New Game on September 16th

For those litigious patentees that have not paid much attention to the passage of the America Invents Act (AIA), or more particularly, the details of the new post grant validity trials of the Patent Trial & Appeal Board (PTAB), a rude wake up call may be headed in your direction. Starting this Sunday, petitions for Inter Partes Review (IPR) and the Transitional Program for Covered Business Method Patents (TPCBMP) will begin to be accepted by the USPTO.

IPR is available for all existing patents (but note the dead zone for very recently issued patents). This is a big change from the previous inter partes patent reexamination model which could not reach patents that stemmed from applications filed before November 29, 1999. TPCBMP will permit the presentation of invalidity arguments that are not based on patents and printed publications. Presentation of non-documentary evidence was not permitted under the old reexamination based system.

There are some standing requirements for petitioners, however, that may prevent some from filing a petition for IPR/TPCBMP. In IPR. standing considerations are primarily based upon certain parallel litigation factors. Namely, a petitioner that has filed a previous declaratory judgment of invalidity against a patent cannot later challenge the patent in IPR, nor can a petitioner that has been served with a complaint for infringement at least 12 months prior. As to TPCBMP, only those petitioners that have been sued or charged with infringement of a qualifying “business method” patent have the necessary standing.

Both IPR and TPCBMP proceedings will provide for limited discovery, be conducted exclusively by Administrative Patent Judges (APJs) of the PTAB, and completed within 12-18 months, by statute.

With the expanded scope and benefits of the PTAB trial proceedings, patentees that previously were unaffected by patent reexamination may find themselves on unfamiliar ground in a few days. So, if your patent becomes the subject of a petition for IPR or TPCBMP, now what?

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Continue Reading Your Patent Has Been Challenged at the PTAB….Now What?

USPTO Webinar Scheduled Today, FAQ Published

As a reminder, the USPTO will conduct a training session from 10 am – noon, in the North Auditorium of the Madison Building at the Alexandria Campus of the USPTO. The training session will be directed to the new Patent Review Processing System (PRPS) of the Patent Trial & Appeal Board (PTAB). The session will be broadcast via WebEx and available for replay thereafter. Information to connect to the training session via WebEx is provided below.

WebEx participants will be able to submit questions through the WebEx chat session.

The USPTO has also issued a brief FAQ on the PRPS system:…

Continue Reading New E-filing Portal for Post Grant Patent Trials Unveiled Today

AIA Changes Only Days Away

Back to school everyone…..the USPTO will kick off its AIA roadshow series in Minneapolis on September 10th and finish up in New York City on September 28th. The roadshow program will explain the final rules and answer audience questions. The agency also will discuss proposed rules for the first-inventor-to-file provision. …

Initiating a USPTO Business Method Patent Challenge After Seeking Declaratory Judgement?

One of the more interesting provisions of the America Invents Act (AIA) is the “transitional program” existing for the next 8 years for so-called business method patents. As described in Section 18 of the AIA, this proceeding will use the standards and procedures of post grant review (PGR). However, unlike PGR, the Transitional Program for Covered Business Method Patents (TPCBMP) will be available for qualifying business method patents on September 16th.

In addition to the requirement that the patent qualify as a “business method” patent, there are other threshold considerations to satisfy in order to properly pursue this proceeding before the USPTO’s Patent Trial & Appeal Board (PTAB). The standing necessary to pursue a TPCBMP of a qualifying patent requires that the petitioner be “charged with infringement,” or previously sued for infringement.

Left with implementing this requirement for proper TPCBMP standing, the USPTO has determined the meaning of “charged with infringement” consistent with the statute Sec. 18(a)(1)(B). In the final TPCBMP rule package issued this past August the USPTO provided Rule 42.302(a), which defines the terminology “charged with infringement”  as ‘‘a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.’’

Of course when such an imminent threat of patent litigation exists, rather than await the inevitable lawsuit/dreaded Eastern District of Texas venue, a potential defendant may pursue a declaratory judgement to secure a preferred venue and/or establish a lack of liability.

Interestingly, both Inter Partes Review (IPR) and (PGR) are unavailable to a petitioner that has previously filed for declaratory judgment to challenge validity. The reason for this IPR/PGR standing control is to prevent those that have chosen district court in the first instance from burdening the USPTO with a later IPR/PGR challenge.  Since TPCBMP follows the “standards and procedures” for PGR, it may be surprising to some that the USPTO rules for TPCBMP exclude the DJ control.
Continue Reading Declaratory Judgment & USPTO Business Method Patent Challenges

Satisfying the Electronic Filing Requirements of PRPS

As discussed earlier this week, the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless otherwise authorized by the Board, all PTAB filings must be submitted electronically 37 C.F.R § 42.6(a)(3). The system will be known as the Patent Review Processing System (PRPS). Currently, the USPTO is testing the prototype system, and soliciting public input on its general format and operation. PRPS will be rolled out in the coming weeks, and be up and running by Septemeber 16th. Practitioners will need to preregister with PRPS prior to their first filing.

While PRPS is still a work in progress, there are some practice tips emerging from the prototype testing sessions. (some preliminary screenshots of the system here)

Especially in the short term, obtaining a filing date will be a big deal for petitioners seeking Inter Partes Review (IPR) subject to a parallel litigation. This is because such petitioners only have 1 year (by statute) to petition for IPR from the date of service of the litigation complaint, and there are petitioners that were sued 10-11 months prior to September 16th. These filers must be especially careful not to miss their 1 year deadline by running afoul of PRPS requirements.

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Continue Reading Obtaining an Electronic Filing Date at the PTAB