Intellectual Property

Recent Posts

PTAB Moves Toward Consistency on Question of Issue Joinder
Posted on 12 Oct 2015 by Scott A. McKeown

New De Facto Precedent on Question of Issue Joinder In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target , a same petitioner was... 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

PTAB Considers Unplugging Hedge Fund Filings
Posted on 19 Jun 2015 by Scott A. McKeown

Hedge Fund IPR Scheme Unraveling Last week, the USPTO's Patent Trial & Appeal Board (PTAB) authorized a Motion for Sanctions in four IPR proceedings filed by the now infamous Kyle Bass & friends. The motion for sanctions will be based on... Read More

PTAB Redundant Grounds of Unpatentability To Come Back From the Dead?
Posted on 7 Oct 2013 by Scott A. McKeown

Simplification of PTAB Trial Grounds May Not Help CAFC Under the old inter partes patent reexamination model, patentees were often faced with 10+ grounds of rejection. The numerosity and overlap in these rejections rendered USPTO processing quite tedious... 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

PTAB Moves Toward Consistency on Question of Issue Joinder
Posted on 12 Oct 2015 by Scott A. McKeown

New De Facto Precedent on Question of Issue Joinder In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target , a same petitioner was... Read More

Amendment Efforts at PTAB Trend Downward
Posted on 16 Dec 2014 by Scott A. McKeown

Multiple Factors Drive Downtrend in Amendments at PTAB Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages... Read More

PTAB Speed Changes Court’s Mind on Motion to Stay Calculus
Posted on 11 Sep 2013 by Scott A. McKeown

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... Read More

PTAB Considers Single Judge Pilot Program
Posted on 26 Aug 2015 by Scott A. McKeown

Pilot Program to Limit APJ Review For IPR Institution As promised in last week's rule package , a second Federal Register Notice ( here ) has issued from the USPTO's Patent Trial & Appeal Board (PTAB). This Notice, entitled: Request for... Read More

PTAB Trends -- Spring 2015
Posted on 1 Apr 2015 by Scott A. McKeown

AIA Trial Practice & Procedure Mature & New Trends Emerge The Patent Trial & Appeal Board (PTAB) has reached steady state in terms of work flow. The number of final decisions (delayed by the 18 month pre-trial and trial phase) are now tracking... Read More

New Representative Order on PTAB Amendment Practice
Posted on 26 Nov 2014 by Scott A. McKeown

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... Read More

Beginning of the End for Kyle Bass & Friends
Posted on 31 Jul 2015 by Scott A. McKeown

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... Read More

Top 5 Reasons for Non-Compliant IPR Petitions
Posted on 17 Sep 2013 by Scott A. McKeown

The First Year of PTAB Patentability Challenges Today marks the one year anniversary of the new patent challenge mechanisms of the America Invents Act (AIA). Over the past few months there have been many noteworthy rulings in the 550+ Inter Partes... Read More

PTAB Formally Appoints Vice Chief & Board Executive
Posted on 24 Sep 2014 by Scott A. McKeown

Trial Section Management Roles Formalized Yesterday, the USPTO announced the appointments of Judge Scott Boalick to the position of Vice Chief Administrative Patent Judge and Adam Ramsey to the position of Board Executive. Judge Boalick had been... Read More

Tags: USPTO , PTAB

PTAB Cracks Down on Copy Cat AIA Petitions
Posted on 29 Sep 2014 by Scott A. McKeown

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. §... Read More