Congress Considers Reformulation of Business Method Patent Definition

Congress to Choose Between Competing Definitions 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 specialized post grant patent challenges have been pursued in relatively limited numbers...

Another Possible Battleground for Defending University Intellectual Property - Inter Partes Review

by Scott D. Marty, J.D., Ph.D. Over the last several months, universities and technology transfer programs have increasingly become the target of petitions for Inter Partes Review (IPR) filings. Effective September 16, 2012, IPR proceedings allow parties to challenge the validity of an issued...

Work Product Immunity & PTAB Proceedings

Attorney Work Product in Unsuccessful IPR Challenges Inter Partes Review (IPR) includes a statutory estoppel provision designed to prevent harassment of a patentee. The statute provides that an IPR challenger that fails to secure cancellation of a challenged patent claim would not only be estopped...

NPE Attempts to Exact License by Threat of IPR

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...

Post Grant Buzz – Summer

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...

Bar Associations Set to Oppose Changes to CBM Statute

Key CBM Revision Unpopular with Bar Associations 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...

Top 5 Mistakes in IPR Petition Drafting

Avoid These Litigation Inspired Drafting Errors One of the biggest misconceptions about the new patentability challenges of the America Invents Act (AIA) is the notion that these administrative trial proceedings are somehow analogous to district court litigation — nothing could be further from...

Discovery in IPR Proceedings, Much Ado About Nothing

Expectations of Significant PTAB Discovery Practices Prove Misguided When discussing Patent Trial & Appeal Board (PTAB) proceedings at CLE events, I am always fascinated by the degree of interest in PTAB discovery procedures. Parties to an Inter Parties Review (IPR) proceeding may obtain what...

Settlement Stats Show Trolls Fleeing PTAB Patent Challenges

Early Statistics Show NPEs Seeking Escape Hatch from PTAB The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or Transitional Proceeding for Covered Business Method Patents (CBM) upon request of the parties. This discretionary...

Medical Technology Patents at the PTAB

IPR…Not Just For Trolls With Congress on the verge of passing still more legislation directed at alleviating the dreaded “patent troll” problem, perhaps Congress should pause to consider what has already been accomplished over the last 18+ months. As pointed at by Gene Quinn at...

Generic Pharma Leverages PTAB

IPRs and Drug Litigation Since Post Grant Review (PGR) is designed to challenge patents on 112 and 101 grounds not available in Inter Partes Review (IPR), it is often assumed that Bio/Pharma is somewhat unconcerned with the growing trend to challenge patents in IPR at the PTAB . Today, my partner...

Speed of PTAB Fuels Criticism of Initial Trial Results

Critics Ignore Long Standing Realities Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings...

PTAB Grants First Motion to Amend in IPR

Patentee Successfully Narrows Claims in IPR Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump...

Gaming IPR Estoppel

Outdated Patent Drafting Techniques Present Opportunities The Patent Trial & Appeal Board (PTAB) poses a significant threat to patent monetization. Not because the PTAB is anti-patent , far from it, but because the patents challenged today were drafted for the scrutiny of the district court. That...

Inexperienced Attorneys Tax PTAB Resources

Growth in PTAB Post-Grant Filings May Require Changes to Workflow This time last year, the Patent Trial & Appeal Board (PTAB) had about 250 Inter Partes Review (IPR) and Covered Business Method (CBM) petitions pending. Only half that number were in the trial phase. One year later, the PTAB...

75% Success Rate for IPR Driven Stays

District Court Stays on the Rise Thanks to PTAB Prior to the passage of the America Invents Act (AIA) many district courts were less than impressed with the lengthy pendencies of patent reexamination proceedings at the USPTO. For this reason, motions to stay a litigation pending patent reexamination...

Pharmaceutical Claims Found Unpatentable

by Michael K. Levy On June 20, 2014, the Patent Trial and Appeal Board (PTAB) issued the first inter partes review (IPR) decisions reaching pharmaceutically-related subject matter, which in this case constituted dietary supplement and vitamin products. Four separate final written decisions, addressing...

First 24 Months of IPR Brings More Filings Than Entire History of Inter Partes Patent Reexamination

Filing Rate to Strain PTAB Bandwidth? In the entire 13 year history of inter partes patent reexamination, 1919 such reexamination requests were filed. Granted, only patents that stemmed from post 11/29/99 patent applications were eligible. But still, even in 2012 (the high water mark for such filings...

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...

Fitch Even IP Alert: PTAB Denies IPR Petition Based on Procedural Considerations

by Timothy R. Baumann On July 23, 2014, the Patent Trial and Appeal Board (PTAB) issued a decision in Zetec, Inc. v. Westinghouse Electric, LLC , that denied Zetec of an inter partes review (IPR) on the basis that it has discretion to deny petitions without considering the substantive merits of the...

Court Unimpressed by PTO Review of Prior Art

Court Finds Clear & Convincing Invalidity Despite Previous USPTO Review The USPTO applies the preponderance of the evidence standard in post-grant patent proceedings to assess patentability relative to applied prior art. For at least this reason, it is far easier to demonstrate unpatentability...

Fitch Even IP Alert: PTAB Once Again Denies IPR Petition Based on Procedural Considerations

On August 13, 2014, in Fidelity National Information Services, Inc., v. DataTreasury Corp. , the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) of two patents because the petition included “voluminous” references that did not clearly identify invalidity...

PTAB Cracks Down on Copy Cat AIA Petitions

Follow-On Filings Thwarted by 35 U.S.C. §325(d) Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to...

IPR Final Decisions Track Reexamination Outcomes

USPTO Inter Partes Patent Challenge Statistics Remain Consistent With two full years of Inter Partes Review (IPR) proceedings on the books, we now have an adequate sample of decisions—158 through 9/26/14. While most IPR decisions are still pending appeal, the results are consistent with earlier...

Statutory Estoppel For IPR Petition Misses?

Unsuccessful IPR Petitioner Urges Expansive PTAB Estoppel In a strange twist, an unsuccessful IPR petitioner is currently urging the CAFC to adopt an expansive interpretation of statutory estoppel for Inter Partes Review (IPR). That is, the petitioner argues where only a subset of claims challenged...