Intellectual Property

Recent Posts

Leahy Bill Released, Drops Goodlatte Provision on Scope of CBM Art
Posted on 25 Nov 2013 by Scott A. McKeown

Critical Technical Fix to CBM Statute Left out of Leahy Bill Wasting no time…the Senate has quickly introduced a companion bill to H.R. 3309 . The senate bill ( here ), sponsored by Senator Leahy of Leahy-Smith America Invents Act (AIA) fame... Read More

Recalibrated Patent Reform Bill Unveiled Thursday?
Posted on 2 Apr 2014 by Scott A. McKeown

Leahy/Cornyn Compromise Hammered Out? Last week, the Senate Judiciary Committee generally considered bill S. 1720 entitled Patent Transparency and Improvements Act of 2013 but held over the matter for this week . It seems there was a bit of a stalemate... Read More

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings
Posted on 20 Aug 2015 by Foley & Lardner LLP

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented... Read More

Patents Post-Grant: Section 101 as a Basis for a Post Grant Patent Challenge
Posted on 28 Sep 2012 by Scott A. McKeown

USPTO Clarifies Stance on 101 Challenges Before the PTAB Over the past few weeks, commentators have been buzzing about the ability/inability to challenge a patent on the grounds that the claims are not directed to statutory subject matter ( 35 U.S... Read More

Patents Post-Grant: Pay to Stay….The Game Changing Impact of Business Method Patent Challenges
Posted on 7 Nov 2012 by Scott A. McKeown

New CBM Challenges to Derail Business Method Patent Assertions? Last September 16th marked the one year anniversary of the enactment of the America Invents Act (AIA). This "patent reform" legislation introduced several new post grant avenues... Read More

Federal Circuit Affirms PTAB in First Decision on an Appeal of America Invents Act Business
Posted on 25 Aug 2015 by Kenyon & Kenyon LLP

by K. Patrick Herman and Christopher W. Glynn Digest of Versata Dev. Group, Inc. v. SAP Am., Inc. , No 2014-1194 (Fed. Cir. July 9, 2015) (precedential) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. On... Read More

The Statutory Defect That May Doom Your CBM Petition
Posted on 25 Sep 2013 by Scott A. McKeown

CBM Statute Inadvertently Excludes Best Source of CBM Prior Art In fashioning the Covered Business Method (CBM) statutes of the America Invents Act (AIA), Congress was sensitive to the resources of the USPTO. That is, Congress realized that certain... Read More

CBM Patent Need Not be Directed to Financial Sector
Posted on 13 Jul 2015 by Scott A. McKeown

Last week, the CAFC issued its long awaited decision in the dispute between Versata and SAP ( here ). The appeal stemmed from the very first Covered Business Method (CBM) patent challenge proceeding. On appeal, one of Versata's (patentee) main challenges... Read More

Patents Post-Grant: The Asymmetric Estoppel of Business Method Patent Challenges
Posted on 7 Nov 2012 by Scott A. McKeown

Unsuccessful CBM Challengers Forced Back into Court? As discussed last week [Oct. 8th - 12th], the Transitional Program for Covered Business Method Patents, or "CBM" proceeding offers significant advantages to qualifying patent challengers... Read More

PTAB Issues Rule Long Awaited Rules Package
Posted on 20 Aug 2015 by Scott A. McKeown

Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion... Read More

Federal Circuit Upholds Broadest Reasonable Interpretation in CBMs but Revisits Reviewability of Institution Decisions
Posted on 15 Jul 2015 by Fitch, Even, Tabin & Flannery

In its second case in as many days touching on both the broadest reasonable interpretation (BRI) standard and the reviewability of institution decisions, the U.S. Court of Appeals for the Federal Circuit both agreed and disagreed with itself. On July... Read More

Congress Considers Reformulation of Business Method Patent Definition
Posted on 4 Jun 2013 by Scott A. McKeown

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... Read More

Bar Associations Set to Oppose Changes to CBM Statute
Posted on 29 Aug 2013 by Scott A. McKeown

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... Read More

Patents Post-Grant: PTAB Expedites First Covered Business Method (CBM) Trial
Posted on 25 Feb 2013 by Scott A. McKeown

101 Issue Fast Tracked to April Oral Argument at PTAB The very first petition for a Covered Business Method Patent Challenge (CBM) was filed on September 16th by SAP (CBM2012-00001). The petition ( here ) challenged U.S. Patent 6,553,350 of Versata... Read More

Speed of PTAB Fuels Criticism of Initial Trial Results
Posted on 24 Apr 2014 by Scott A. McKeown

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... Read More