Posts Tagged: "Kunin Interview"

The Role of an Patent Procedure Expert in Patent Litigation

When you review file histories as a patent office practice expert it’s an eye-opening experience because sometimes it’s almost inexplicable as to what happened and how it could possibly have happened. And that’s what leads to some of the litigation because of the kinds of things that happen in these cases. It demonstrates why there’s still a place for a patent office practice expert in patent litigations due to the eccentricities of the practice and procedure that lead to peculiar results. An expert is needed to explain how and why these situations happen in the PTO… Sometimes you shake your head in terms of how one thing happened after another that led to a particular result that is defies how proper PTO practice and procedure is defined in the rules of practice and the MPEP.

The PTAB and Patent Office Administrative Trials

KUNIN: ”But what is the one thing that can be a break the bank issue? What if the patent owner asserts eight patents against you in a litigation. Can you pick and choose which are the best patents among the eight to challenge? Or are you going to have to file and pay for eight IPRs? At what particular point does it actually become a financial burden for you to go after every asserted patent against you in that litigation in separate IPRs? Either you can try to strategically determine which are the patents which are most harmful to you and most vulnerable and go after them in IPRs, or try to go after all of them in IPRs. But if you go after all of them, you already explained how expensive it is, all right? So let’s assume for argument sake it’s a fairly complex proceeding and it’s costing $300,000 per IPR. So $300,000 times eight is the total cost. What’s the cost of the litigation in defending against all the asserted patents?”

A Patent Conversation with Steve Kunin: De Novo Review and Bright Line Rules

KUNIN: ”Remember though an Act of Congress in 1982 the Federal Circuit was established as the single reviewing court for district court patent appeals to provide uniformity and consistency in the development of the patent laws. And for a couple of decades it was pretty much left unsupervised by the Supreme Court to let the patent law develop more consistency. But now if you look back from 2014 you see that there’s been a sea change in how the Supreme Court has exercised its supervisory role. This may be in part due to the intra-court disagreements in the Federal Circuit decision-making inviting the Supreme Court to take a case. We see that systematically there seems to be a desire of the Supreme Court to get the Federal Circuit, in the area of patent law, to apply general law principles. No special rules for patent cases need exist for legal aspects that are not unique to the patent statutes.”

The Finale: Steve Kunin Interview Part 3

“You’re going to get a claim construction early from the PTAB. In fact, one of the interesting results with the respect to a review of the decisions to initiate inter parted review or covered business method challenges is that the PTAB lays out for you its claim construction findings and its reasons. This may have a tremendous influence on the concurrent litigation and its claim construction. Obviously, the patent owner’s going to say certain things with respect to how the claims should be construed in its patent owner response, but nevertheless such statements may result in a clear disavowel of claim scope. Such admissions will have an impact on the concurrent litigation. Conceptually there are many strategic and tactical issues that are of general applicability to both the litigation and administrative trial.”

Exclusive Interview with Steve Kunin, Part 2

On May 6, 2013, I sat down with Steve Kunin and we discussed a wide range of patent issues. In Part 1 of the interview we discussed the new post grant procedures for challenging issued patents, and started discussing the estoppel provisions. In Part 2 we conclude our discussion of estoppel and move into discussing secret prior art, the Economic Espionage Act, the algorithm line of cases from the Federal Circuit and the erosion of patent rights that started with eBay v. MercExchange.