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Posts Tagged: "Brad Pedersen"

SAS: When the Patent Office institutes IPR it must decide patentability of all challenged claims

In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged. To provide instant reaction to the Supreme Court’s decision in SAS Institute we’ve reached out to an All-Star panel of industry experts for their take on this important decision. Their analysis follows. 

Industry Reaction to Supreme Court Decision in Oil States v. Green Energy

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  In order to get a diverse array of views, we held open comments through early evening for this instant reaction piece.

Is there an inherent bias against patent owners at the PTAB?

Pedersen doesn’t disagree that the patent system is biased against the patent owner in that “the patent owner has to run the gauntlet,” referring to needing to prevail in every forum 100% of the time. That means prevailing by convincing a patent examiner a patent should be awarded in the first place, prevailing against any post grant challenges, prevailing at the ITC and in the district court, and ultimately prevailing at the Federal Circuit. Pedersen acknowledged that with the system we have as a whole even if at ever step of the way there is a 90% chance that the patentee would win by the time you calculate the percent of “running the gauntlet” with the patent unscathed you are down to 50-50 at best.

Book Review: Patents After the AIA: Evolving Law and Practice

The treatise presents both practical and strategic advice regarding the preparation, prosecution, evaluation, enforcement, and litigation of U.S. utility patents after the passage of the AIA and effectively conveys the material in a well-organized fashion. Detailed coverage of U.S. patent law, including pre-AIA context and associated rules and guidelines, are incorporated. Particularly impressive are the “Practical Tips” the authors include in highlighted areas on many pages. Numerous graphs, tables, and pictorial illustrations assist readers’ comprehension of the material. Each chapter begins with a highly detailed Table of Contents, subdivided for ease of use. The authors write clearly and include helpful cross-references to case law, USPTO practice matters, legislation, and primary and secondary sources.

Patent and IP Wishes for 2015

I would love to see patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice. I would also love to see meaningful copyright reforms and/or real Internet industry cooperation that recognizes the important rights of content creators, both large and small. I would also like to see federal trade secret legislation, which is critically important given the erosion of patent rights over the last several years. Until Congress realizes just how damaging the Supreme Court has been over the last decade more innovators will need to rely on trade secret protection, and having one regime rather than 51 regimes (i.e., 50 states plus the District of Columbia) makes no sense given the national and international scope of business in today’s global economy.

Industry Insiders Make Patent Wishes for 2014

Manny Schecter (IBM Chief Patent Counsel) writes: “Last year I wished for greater understanding of the patent system outside of the patent community. Awareness of the patent system has certainly grown, but understanding? I’m not so sure. I still see a rush by many to hasty “solutions” that would actually result in more harm than good. My latest concern is proposals for technology-specific reforms. These proposals comprise calls for restricting the scope of, enhancing challenges for, or eliminating altogether, patents relating to certain technologies such as computer and genetic implemented inventions.”

Patent Litigation: Too Much as Compared to What?

Although these charts do not represent a rigorous analysis, they do show two things. First, patent activity appears to have a relatively consistent correlation to economic activity. Whether Lincoln was correct that there is a cause relationship or whether this is simply an effect relationship can be debated, but the existence of a relationship seems to be well-established. Second, patent litigation also appears to be following the longer-term trend of the relationship between patent activity and economic activity. The recent jump in the number of patent lawsuits filed, while significant in the short term, does not appear to represent a significant deviation from what would be expected based on longer-term historical trends.

America Invents: How the New Law Impacts Your Patent Practice

The America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent reform legislation in decades, and it promises to change virtually all of patent practice as we know it over the next 18 months. Some pieces of the legislation will go into effect almost immediately,…