Intellectual Property

Recent Posts

Is RPI/Privity an Issue of PTAB Standing?
Posted on 7 Jul 2015 by Scott A. McKeown

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments : Real Party in Interest: 5. Should a patent owner... Read More

CAFC Ruling Calls Into Question PTAB Settlement Authority
Posted on 3 Apr 2015 by Scott A. McKeown

PTAB Definition of "Proceeding" Found Inconsistent With the Law Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. ( here ) , the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America... Read More

Amendment Missteps Before the PTAB
Posted on 21 Feb 2014 by Scott A. McKeown

Patentees Fail to Adjust to Motion Practice As final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings begin to issue from the USPTO’s Patent Trial & Appeal Board (PTAB), it is clear that patentees... Read More

PTAB Ruling Breaks Ranks With Supreme Court and Federal Circuit
Posted on 1 Sep 2015 by Kenyon & Kenyon LLP

by Brian S. Mudge and Tiffany Mahmood In a recent trial institution decision, the Patent Trial and Appeal Board held that a business method patent for trading securities was patent eligible under 35 U.S.C. § 101. The case, Chicago Mercantile Exchange... Read More

PTAB's Use of Broadest Reasonable Interpretation Upheld ... Again
Posted on 9 Jul 2015 by Scott A. McKeown

En Banc Rehearing of Cuozzo Appeal Denied In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis... Read More

Will PTAB Decisions In Interferences Declared After September 15, 2012 Be Reviewable In Court?
Posted on 7 Jan 2014 by LexisNexis Legal Newsroom Staff

The America Invents Act preserves court review under both 35 USC 141 and 35 USC 146 of decisions by the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board in interferences decided before September 15, 2012 and in interferences... Read More

Philips Construction at PTAB...Still Want It After B&B Hardware?
Posted on 9 Apr 2015 by Scott A. McKeown

B&B Hardware Emphasizes Risks of Patentee Legislative Initiatives A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc. , No. 13-352, slip op., 575 U.S. __ (2015) [ an enhanced version of this opinion is available... Read More

Proposed PTAB Rule Change May Backfire on Some Patentees
Posted on 22 Sep 2015 by Scott A. McKeown

Patentees Back Themselves Into a Corner at PTAB Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative... Read More

2014 PTAB Decisions That Changed Post-Grant Trial Practice
Posted on 7 Jan 2015 by Scott A. McKeown

Top 5 Practice Changing PTAB Decisions of 2014 Since the start of the administrative patent trials of the America Invents Act (AIA) on September 16, 2012, much has changed at the Patent Trial & Appeal Board (PTAB). The number of AIA trial petitions... Read More

Post-Grant Proofing Your Patent Portfolio
Posted on 14 Jan 2014 by Scott A. McKeown

PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin. ‘ While Bob clearly had some broader... Read More

PTAB Moves Forward on Quick-Fix Rule Changes
Posted on 30 Mar 2015 by Scott A. McKeown

Page Limit Changes Effective Immediately for All AIA Trial Filings The USPTO's Patent Trial & Appeal Board (PTAB) announced some of their "quick fix" rule changes March 27 in advance of the anticipated Federal Register Notice. In... Read More

PTAB Begins Front Loading IPR & CBM Schedules
Posted on 3 Jan 2014 by Scott A. McKeown

PTAB Begins Front Loading IPR & CBM Schedules The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most... Read More

Plaintiffs Beware: PTAB Fee Awards Might Be Headed Your Way
Posted on 24 Aug 2015 by Scott A. McKeown

PTAB + Octane Fitness = Problem Back in 2014, I explained that the recent shift in exceptional case analysis under Octane Fitness, LLC v. ICON Health & Fitness, Inc . and Highmark Inc. v. Allcare Health Mgmt. Sys ., would provide opportunity... Read More

Senate Moves to Derail Gains of America Invents Act
Posted on 9 Jun 2015 by Scott A. McKeown

Patent Act Rewritten to Appease Bio/Pharma Lobby In a surprising change of course, the Senate bill known as the ' The Patent Act" (S.1137) has morphed into a PTAB reform bill. The initial version of the Bill hardly touched the patentability... Read More

2014 Update on PTAB Trial Statistics
Posted on 17 Jan 2014 by Scott A. McKeown

Statistics Demonstrate Staggering Demand for PTAB Patent Challenge Proceedings Last week, the USPTO issued the official tallies/progress statistics for Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings... Read More

  • Blog Post: 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...
  • Blog Post: PTAB Begins Front Loading IPR & CBM Schedules

    PTAB Begins Front Loading IPR & CBM Schedules The new patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are instantly distinguishable from the previous examiner-based, patent reexamination—perhaps most notably in speed. That is, an Inter Partes Review...
  • Blog Post: Will PTAB Decisions In Interferences Declared After September 15, 2012 Be Reviewable In Court?

    The America Invents Act preserves court review under both 35 USC 141 and 35 USC 146 of decisions by the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board in interferences decided before September 15, 2012 and in interferences pending on September 15, 2012. However, the AIA...
  • Blog Post: Post-Grant Proofing Your Patent Portfolio

    PTAB Review Proceedings Force Change to Age Old Patent Prosecution Paradigm As Bob Dylan once warned, you better start swimmin’ or you’ll sink like a stone….the times they are a changin. ‘ While Bob clearly had some broader ranging social issues on his mind when he penned...
  • Blog Post: 2014 Update on PTAB Trial Statistics

    Statistics Demonstrate Staggering Demand for PTAB Patent Challenge Proceedings Last week, the USPTO issued the official tallies/progress statistics for Inter Partes Review (IPR), Post Grant Review (PGR) and the Covered Business Method (CBM) proceedings. As of January 9, 2014 the Patent Trial &...
  • Blog Post: Amendment Missteps Before the PTAB

    Patentees Fail to Adjust to Motion Practice As final written decisions in Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings begin to issue from the USPTO’s Patent Trial & Appeal Board (PTAB), it is clear that patentees have yet to master the process of amending their...
  • Blog Post: PTAB Requests Feedback to Optimize AIA Post-Grant Patent Challenges

    Federal Register Notice to Issue Today As promised , even a bit early, the USPTO will issue a Request for Information in today’s Federal Register. The Notice, entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board , will pose...
  • Blog Post: 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...
  • Blog Post: New Representative Order on PTAB Amendment Practice

    Representative Order Suggests Evolving Motion to Amend Practice 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...
  • Blog Post: Federal Circuit 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...
  • Blog Post: 2014 PTAB Decisions That Changed Post-Grant Trial Practice

    Top 5 Practice Changing PTAB Decisions of 2014 Since the start of the administrative patent trials of the America Invents Act (AIA) on September 16, 2012, much has changed at the Patent Trial & Appeal Board (PTAB). The number of AIA trial petitions has exploded . This increased workload has diminished...
  • Blog Post: PTAB Moves Forward on Quick-Fix Rule Changes

    Page Limit Changes Effective Immediately for All AIA Trial Filings The USPTO's Patent Trial & Appeal Board (PTAB) announced some of their "quick fix" rule changes March 27 in advance of the anticipated Federal Register Notice. In addition to expected changes to page limits , the...
  • Blog Post: CAFC Ruling Calls Into Question PTAB Settlement Authority

    PTAB Definition of "Proceeding" Found Inconsistent With the Law Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. ( here ) , the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America Invents Act (AIA) is triggered by the mere filing...
  • Blog Post: Philips Construction at PTAB...Still Want It After B&B Hardware?

    B&B Hardware Emphasizes Risks of Patentee Legislative Initiatives A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc. , No. 13-352, slip op., 575 U.S. __ (2015) [ an enhanced version of this opinion is available to lexis.com subscribers ]. In B&B , the...
  • Blog Post: PTAB Expanded Panels Are Not by Party Request

    Board Updates Public on Manner of Designating Expanded Panel As the Patent Trial & Appeal Board (PTAB) is now issuing an increasing number of Final Written Decisions (FWD) in addition to Institution Decisions, it is, not surprisingly, experiencing an increasing number of Requests for Rehearing...
  • Blog Post: Senate Moves to Derail Gains of America Invents Act

    Patent Act Rewritten to Appease Bio/Pharma Lobby In a surprising change of course, the Senate bill known as the ' The Patent Act" (S.1137) has morphed into a PTAB reform bill. The initial version of the Bill hardly touched the patentability trials of the USPTO's Patent Trial & Appeal...
  • Blog Post: Is RPI/Privity an Issue of PTAB Standing?

    CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments : Real Party in Interest: 5. Should a patent owner be able to raise a challenge regarding a real party...
  • Blog Post: PTAB's Use of Broadest Reasonable Interpretation Upheld ... Again

    En Banc Rehearing of Cuozzo Appeal Denied In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. At issue in the request for en banc...
  • Blog Post: Beginning of the End for Kyle Bass & Friends

    Motion for Sanctions Details True Hedge Fund Motives On Wednesday, Celgene filed its Motion for Sanctions against the Coalition for Affordable Drugs in IPR2015-01092, 1096, 1002, and 1103. The Patent Trial and Appeal Board (PTAB) now has until October 28th to decide the issue. As I have maintained...
  • Blog Post: Plaintiffs Beware: PTAB Fee Awards Might Be Headed Your Way

    PTAB + Octane Fitness = Problem Back in 2014, I explained that the recent shift in exceptional case analysis under Octane Fitness, LLC v. ICON Health & Fitness, Inc . and Highmark Inc. v. Allcare Health Mgmt. Sys ., would provide opportunity for successful Patent Trial & Appeal Board (PTAB...
  • Blog Post: PTAB Ruling Breaks Ranks With Supreme Court and Federal Circuit

    by Brian S. Mudge and Tiffany Mahmood In a recent trial institution decision, the Patent Trial and Appeal Board held that a business method patent for trading securities was patent eligible under 35 U.S.C. § 101. The case, Chicago Mercantile Exchange, Inc. v. 5th Market, Inc. , CBM2015-00061...
  • Blog Post: CAFC Finds Prior Art Status of Patent Depends on Claim Scope?

    Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims? Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 ( here ). While...
  • Blog Post: Proposed PTAB Rule Change May Backfire on Some Patentees

    Patentees Back Themselves Into a Corner at PTAB Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative to litigation for patent challengers, and...