Intellectual Property

Recent Posts

PTAB Triples in Size Since 2011
Posted on 18 Aug 2014 by Scott A. McKeown

AIA Trials Drive PTAB Growth to 235+ Judges The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board... 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: PTAB Issues Order Outlining Base Pro Hac Vice Qualifications
Posted on 28 Nov 2012 by Scott A. McKeown

Expanded PTAB Panel Outlines Requirements for Unregistered Practitioners Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c... 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

Leveraging PTAB Claim Analysis in the District Court
Posted on 12 Sep 2014 by Scott A. McKeown

PTAB Claim Analysis Can Serve as Persuasive Authority Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial... Read More

Fitch Even IP Alert: PTAB Once Again Denies IPR Petition Based on Procedural Considerations
Posted on 21 Aug 2014 by Fitch, Even, Tabin & Flannery

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”... Read More

NPEs Unwittingly Invite Lopsided Battles at PTAB
Posted on 10 Apr 2013 by Scott A. McKeown

Stay Calculus to Encourage Multi-Defendant Attacks As the new patentability trials of the America Invents Act (AIA) have only been available for 7 months, their impact is only now beginning to be felt in the district courts. The new USPTO Patent... Read More

Patents Post-Grant: Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?
Posted on 20 Mar 2013 by Scott A. McKeown

Raising of Evidentiary Informalities Prior to Trial Institution During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO's definition of a "proceeding' includes the preliminary proceeding... Read More

PTAB & Alternative Dispute Resolution
Posted on 24 Apr 2015 by Scott A. McKeown

PTAB Scheduling Orders Begin Suggesting ADR Statements The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties... Read More

Patents Post-Grant: CAFC Finds PTAB More Than Mere Umpire
Posted on 11 Feb 2013 by Scott A. McKeown

Over the years, the PTAB has shed it's "super-examiner" role to more of that of an umpire- calling balls and strikes. That is to say, the PTAB has drifted toward a relatively narrower view of the scope of issues it will substantively review... Read More

Patents Post-Grant: Patent Reexamination Surge Headed to USPTO
Posted on 20 Aug 2012 by Scott A. McKeown

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent... Read More

PTAB Receives First PGR Petition
Posted on 12 Aug 2014 by Scott A. McKeown

First PGR Petition Argues Patent is FITF Based on 112 Deficiency Last week, the first petition for Post-Grant Review was filed with the Patent Trial & Appeal Board (PTAB) (PGR2014-00008). The petition targets U.S. Patent 8,684,420, which is... Read More

Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon?
Posted on 23 Jul 2012 by Scott A. McKeown

Reduction in Incoming Requests & InterPartes Workload to Free Up Resources Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last... Read More

Patents Post-Grant: Notable Changes in the Final Patent Trial & Appeal Board Rules
Posted on 20 Aug 2012 by Scott A. McKeown

Final Rules Modified to Address Most Common Criticisms Yesterday's [August 14th] printing of the final rules to implement the post grant patent proceedings of the AIA is the culmination of well over a years worth of intensive, and tireless effort... Read More

Should You Request a Rehearing of Your PTAB Trial Order?
Posted on 20 May 2013 by Scott A. McKeown

Requests for Rehearing May Backfire on Patentees As detailed earlier this week, a patentee's decision to file a preliminary response in an IPR/CBM preliminary proceeding is not as straightforward as one would expect . Where such a preliminary... Read More