Posts Tagged: "Scott McKeown"

The United States Patent and Trademark Office (USPTO) has published an Advance Notice of Proposed Rulemaking (ANPRM) in the Federal Register, seeking public comment regarding a variety of issues relating to proceedings before the Patent Trial and Appeal Board (PTAB). The deadline to comment is June 20, 2023, and the USPTO has signaled that no one should anticipate any additional…

On Tuesday, March 21st, the U.S. Supreme Court issued a decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, a case which looked at the issue of whether and to what extent the defense of laches may bar a claim for patent infringement brought within the six-year statutory limitations period, as defined by 35 U.S.C. Section 286. In a 7-1 vote, the Supreme Court decided that the equitable defense of laches cannot be invoked against claims for infringement occurring during the statutory period.

The Patent Trial and Appeal Board (PTAB), a tribunal of the United States Patent and Trademark Office (USPTO), has become an increasingly popular and efficient venue for resolving patent validity challenges since it was given increased responsibilities five years ago through the enactment of the America Invents Act (AIA). To help establish best practices for the unique practice and skills required before the PTAB and to foster communication among its various stakeholders, the PTAB Bar Association was formed by leading legal advocates with the mission to promote the highest professional and ethical standards among lawyers and stakeholders who appear before the PTAB.

The first episode of Star Trek aired on September 8, 1966, some 50 years ago. Although the original series ended after only three rather disappointing seasons, the franchise would go on to spawn many sci-fi series and blockbuster movies. Star Trek has inspired generations of scientists and engineers, who continue to attempt to bring into being the gadgets and technology written into the story line. For example, several years ago the United States Patent Office issued a patent on the first cloaking device, last year scientists at the U.S. Naval Research laboratory created transparent aluminum, IBM’s omnipotent computer known as Watson can easily be likened to the all-knowing Star Trek computer, and a real-life food replicator can prepare a meal in 30 seconds. Of course, countless scientists have theorized about the possibility of a real life transporter, which is described as the holy grail of Star Trek technologies. Indeed, just a few months ago Russia embarked upon a path to achieve transporter technology within the next 20 years, and researchers believe through the use of quantum mechanics they can create a transporter-like device for data.

“This is obviously a victory for some who challenge a patent’s validity in IPR proceedings since broadly construed claims are more vulnerable to attack than narrowly construed claims” remarked Scott Daniels, partner at Westerman Hattori Daniels & Adrian, LLP. “Still, the great majority of IPR decisions do not turn on claim construction and for those cases Cuozzo simply makes no difference.”… Levy, who was similarly dead on accurate with his predictions, raises an important point that so many in the patent community who were rooting for Cuozzo failed to keep in mind. Those challenging the action of an agency face a substantial uphill battle when they seek a judicial determination overriding agency rulemaking and statutory implementation.

On Monday, April 25, 2016, the United States Supreme Court heard oral arguments in Cuozzo Speed Technologies v. Lee, the first case in which the Supreme Court will decide issues relating to inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). With the oral arguments now behind us, I once again reached out to a panel of experts who are closely watching the case to ask for their reactions. Once again, I posed the question: What do you expect the Supreme Court to do in Cuozzo? This time, with the benefit of having listened to the oral arguments, the reactions and predictions of our panel of experts follows.

The inaugural IAM event Patent Law & Policy, which will focus on how developments in law and policy affect patent owners’ ability to monetize their rights, will take place in Washington DC on November 17, 2015. This one-day conference in Washington DC offers all those involved in the patent market the perfect opportunity to listen to, learn about and engage in the many legal and policy debates currently taking place around patents.

Congress created AIA trial proceeding to combat trolls, not create an altogether new class of them. Since the initial filings of Hayman, the STRONG ACT has been introduced in the Senate and includes a provision that would require standing for IPR petitioners (presumably to thwart such filings). However, companies not only employ IPR as an alternative to ongoing litigation but as a due diligence tool to avoid such situations in the first instance. Innovators looking to develop a new product line, or new area of business should have the freedom to clear the landscape of improvidently granted patents via the PTAB without having to wait for a lawsuit, or threat of one. Such knee-jerk legislative fixes will have unintended, and unfortunate consequences.

Between September 16, 2012, and August 7, 2014, there were 1793 post grant challenges instituted. See USPTO PTAB Update, slide 5. Of those challenges 1,585 (or just over 88%) were inter partes reviews. There have been 201 covered business method challenges, 6 derivation proceedings and only a single post grant review… Prior to enactment of the AIA it was believed that bio/pharma would largely be spared from post grant challenges. Biotech and pharmaceutical companies tend to have fewer patents and do not collect patents in the same way that electronics and software companies do. Furthermore, biotech and pharma patents tend to be more detailed and overall of a higher quality than your average patent. Given the relatively few patents that these companies hold that cover core assets even 5.2% of post grant challenges coming from the bio/pharma space is surprising. No patents are safe from post grant challenge it seems.