Patent Trial & Appeal Board

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Court Cites Improved Speed of PTAB as Eliminating Potential Prejudice

The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings— but it is the speed and effectiveness that is changing the perspective of the judiciary on staying litigation pending USPTO proceedings.

As most are aware, the old patent reexamination system, at least on the inter partes side, has been replaced by IPR. IPR must be concluded by statute within 12-18 months, a marked improvement over the (roughly speaking) previous 6+year path through the Central Reexamination Unit (CRU), Board of Patent Appeals & Interferences (BPAI) and Court of Appeals for the Federal Circuit (CAFC). These changes are being quickly recognized by courts, several of which have agreed to halt litigation proceedings upon the mere filing of an IPR (months in advance of an Order to grant the IPR petitions).

Previously, when an inter partes or ex parte patent reexamination was the basis for the motion to stay the court proceeding, the strongest plaintiff arguments in opposition were that the significant USPTO delay would prove prejudicial to the plaintiff…not any more.
Continue Reading PTAB Speed Changes Court’s Mind on Motion to Stay Calculus

Key CBM Revision Unpopular with Bar Assoc’s

One of the more intriguing mechanisms of the America Invents Act (AIA) is the Transitional Program for Covered Business Method (CBM) Patents. To date, these speciailized post grant patent challenges have been pursued in relatively limited numbers as compared to the more generic Inter Partes Review (IPR) proceedings. The reason for the disparity between CBM and IPR filing rates is quite simple — IPR is available for any technology not just “business method patents.” Yet, the CBM proceding is far superior to IPR in many strategic respects.

Recognizing the potential of CBM filings to have a greater impact on the patent litigation landscape, Congress is actively considering alterations to the existing statutory framework that would encourage greater use of this powerful AIA mechanism.…

Continue Reading Bar Associations Set to Oppose Changes to CBM Statute

Congress & USPTO Prepare for Busy Fall Season

As Congress turns back to patent reform efforts in the Fall there will also be a fair amount of activity at the USPTO. The “executive actions” released by the White House months ago were aimed primarily at the USPTO. In response, several proposed rule making packages and changes to examination practice are  expected in the coming months.

1. The USPTO is expected to issue strict guidelines requiring the identification of the real-party-in-interest for issued patents. …

Continue Reading Coming USPTO Patent Rule Packages & Initiatives

PTAB Braces For Increased AIA Hearings & Reexamination Surge

As we head to the end of the summer months, many of the first patentability trials of the AIA are maturing for decision. Going forward, the USPTO’s Patent Trial & Appeal Board (PTAB) will face a growing number of these oral hearings, also the surge of inter partes patent reexamination filings made last September will also be headed to the Board for decision. At last week’s Patent Public Advicory Committee (PPAC) meeting, the PTAB reported on the progress of their workload, and their plans for staffing up in anticipation of the coming reexamination surge.…

Continue Reading Post Grant Buzz – Summer

Preemptive Filing May Provide More Patentee Flexibilty in Amending

Prior to the AIA, some patentees would preemptively challenge their own patents in an ex parte reexamination proceeding in the hopes of staving off an imminent inter partes reexamination challenge. The thinking was that since the challenge was inevitable, it made more sense to choose the ex parte proceeding as statistically more favorable to patentees.  In essence the patent owner would rush in with art identified by an opponent so that a later presentation of the same art by the opponent in an inter partes reexamination filing would be deemed cumulative— and in some cases it worked. 

For patentees facing the imminent threat of a new AIA filing (IPR, PGR, or CBM) is this tactic still effective?
Continue Reading Patentee Tactic for Looming PTAB Patent Challenges

PTAB to Broadcast First IPR Hearing

With IPR proceedings limited, by statute, to a 12 month duration, many of the first IPRs pursued last fall will be concluding shortly. The first, IPR2012-00001 (Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC) will go to oral hearing on August 16th. The PTAB has set…

NPE Files Unsuccessful IPR Against Target

Over the years I have seen a handful of non-practicing entities (NPEs) pursue post grant challenges against the patents of their opponent. This “turning of the tables” by the NPE is an odd strategy since the patent of the innovator defendant is useless against an NPE (i.e., they don’t make or do anything to infringe). Clearly, the challenge is not to avoid infringement liability, or narrow a broad patent scope. Instead this tactic is an extension of the game NPEs play—that is, forcing cost and business uncertainty on their opponent to drive settlement.

Whether through patent reexamination, or the more robust Inter Partes Review (IPR), the ploy is almost always an afterthought. Not surprisingly,…

Continue Reading NPE Attempts to Exact License by Threat of IPR

AIA Alternatives to Patent Litigation Prove Wildly Popular

It’s hard to believe that it has only been 10 months since September 16, 2012. On that date, the new patent challenge proceedings of the America Invents Act (AIA) first became available. Since that day 400+ petions for trial (IPR and CBM) have been filed with the…