Intellectual Property

Recent Posts

Patents Post-Grant: USPTO Warns on Late Inter Partes Patent Reexamination Filings
Posted on 4 Sep 2012 by Scott A. McKeown

September 15 Deadline Fast Approaching Yesterday {August 29th], the USPTO issued a notice entitled September 15, 2012 Deadline to File Requests for Inter Partes Reexamination Proceedings and Modification of Notice of Failure to Comply Form ( here )... Read More

Patents Post-Grant: Post Grant Fee Structure a Boon for Patent Trolls?
Posted on 29 Feb 2012 by Scott A. McKeown

Modern Patent Troll Business Model Insulated from New Post Grant Challenges Roughly two weeks ago the USPTO published the last of the Post Grant related rule packages established by the America Invents Act (AIA). The rule packages propose hefty filing... Read More

Kyle Bass Now 0-3 at PTAB With More Pain to Come
Posted on 4 Sep 2015 by Scott A. McKeown

Patents in the Unpredictable Arts No Easy IPR Mark Back in January of last year Kyle Bass introduced himself to the patent community through a series of brash, public pronouncements on a perceived lack of quality in drug patents . His stated intention... Read More

Statutory Estoppel For IPR Petition Misses?
Posted on 10 Oct 2014 by Scott A. McKeown

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... Read More

Patents Post-Grant: Settling Post Grant Patent Proceedings
Posted on 31 Jul 2012 by Scott A. McKeown

Will Contesting Parties Embrace the New Post Grant Settlement Provision? One of the more intriguing provisions of the new post grant patent proceedings of the America Invents Act (AIA) is the ability to settle these patentability disputes by agreement... Read More

Common Patentee Missteps in Inter Partes Review
Posted on 17 May 2013 by Scott A. McKeown

Preliminary Responses: Just Because You Can Doesn't Mean You Should The new post grant patentability challenges of the America Invents Act (AIA) have been warmly embraced by the public as a cost effective patent dispute resolution tool . Patent... Read More

Proposed Amended Complaint Not Served Under IPR Statute 315(b)
Posted on 13 Jan 2015 by Scott A. McKeown

PTAB Designates Decision as Informative on 315(b) Question Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service... Read More

Patents Post-Grant: House Reverts to Senate Inter Partes Review Standard
Posted on 12 Apr 2011 by Scott A. McKeown

SNQ Standard Removed by Proposed Manager Amendment Today, the Chairman of the House Judiciary Committee circulated a Manager's Amendment to H.R. 1249. ( here ). There were several notable changes to the proposed Inter Partes Review and Post Grant... Read More

Patents Post-Grant: USPTO Page Limit Proposals Need Recalibration
Posted on 13 Mar 2012 by Scott A. McKeown

Proposed Page Limits Based on Interference Model As discussed previously, the fees proposed to initiate for Post Grant Review (PGR) and Inter Partes Review (IPR) may be too cost prohibitive for many filers . Yet, perhaps more troubling than the proposed... Read More

PTAB Crashers: A Who’s Who of Non-Practicing IPR Petitioners
Posted on 15 Apr 2015 by Kenyon & Kenyon LLP

by Michelle Carniaux and Michael E. Sander Although IPR proceedings were intended to provide those accused (or at risk of being accused) of patent infringement a faster and less costly proceeding to challenge the validity of a patent, it has also drawn... Read More

Patents Post-Grant: Examiner Claim Confirmations in Inter Partes Patent Reexamination, What Happens on Appeal?
Posted on 4 Dec 2012 by Scott A. McKeown

How Often Are Examiner Claim Confirmations Upheld in Inter Partes Patent Reexamination For challengers in an inter partes patent reexamination (IPX), confirmation of patent claims by the examiner can pose a significant set back. That is to say, the... Read More

Patents Post-Grant: Creeping Death....The Infectious Estoppel Impact of PTAB Validity Trials
Posted on 11 Oct 2012 by Scott A. McKeown

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... Read More

Patents Post-Grant: Patent Troll Advantage to End In Texas?
Posted on 29 Jan 2013 by Scott A. McKeown

By: Scott A. McKeown and Greg Gardella The ED Tex Conundrum Presented by Inter Partes Review The Eastern District of Texas is a favorite forum of patent trolls in substantial part because its judges have demonstrated a substantial disinclination... Read More

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

Patents Post-Grant: New USPTO Fee Setting to Drive Filing Behaviors?
Posted on 31 Jan 2012 by Scott A. McKeown

USPTO Fee Structure to Discourage Conduct? It is expected that the rules to implement post-grant review (PGR), inter partes review (IPR) and transitional business methods post-grant review (TBMP) proceedings will be printed in the Federal Register... Read More