Insights

BSKB’s intellectual property attorneys write articles on important and timely topics in intellectual property law across a variety of industries. You’ll find the latest articles and industry insights here.

  • January 28, 2016

    Amending Patent Claims During Inter Partes Review

    by D. Richard Anderson | Corporate Counsel

    The dramatic shift of U.S. patent validity “litigation” from federal district court to the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO)) has created a dilemma for patent owners. Construing claims based on their “broadest reasonable interpretation” (BRI), and applying a relatively low standard of proof at trial, PTAB final decisions have overwhelmingly sided against patent owners. Faced with this new reality, a patent owner involved in a fast-moving America Invents Act (AIA) post-grant proceeding, such as an Inter Partes Review (IPR), must understand all options available for preserving its valuable U.S. patent rights. This article explores one such option – motions to amend – and explains the procedural hurdles, pitfalls and consequences associated with amending claims during an IPR trial.

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  • January 27, 2016

    Estoppel Arising From PTAB Trials

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | Corporate Counsel

    More than two years has passed since the first final written decision in an inter partes review (IPR) in Garmin v. Cuozzo Speed Tech. While the process and rules for post-grant proceedings, such as IPRs, have been clarified by the numerous Patent and Trial Appeal Board (PTAB) decisions and reviews by the U.S. Court of Appeals for the Federal Circuit, one area that still has not been fully tested or developed is the application of estoppel arising from PTAB post-grant proceedings. There is little guidance from district courts as to how the “reasonably could have raised” standard for estoppel of petitioners will be applied. There is also little to no guidance regarding possible patent owner estoppel from either the district courts or the U.S. Patent and Trademark Office (PTO), and such guidance may not be available until enough time has passed for applications related to patents subject to post-grant proceedings are issued by the PTO and tested by district courts.

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  • January 26, 2016

    Evidentiary Considerations in PTAB Trials

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | Corporate Counsel

    Evidence submitted in a trial before the Patent Trial and Appeal Board (PTAB) varies considerably from that submitted in district court litigation in terms of form, substance and method and timing of presentation. A major factor to consider when selecting evidence to present in a PTAB trial is the audience receiving the evidence, which in the case of a PTAB trial is a panel of administrative patent judges (APJs) with formal scientific education and training and years of experience in patent law. Numerous orders regarding motions to exclude have noted the PTAB’s disfavor for such motions, usually noting the strong public policy for making all information filed in a non-jury, quasi-judicial administrative proceeding available to the public, especially in the determination of patentability of claims of an issued patent. This article will explore various issues, from the perspective of the petitioner and the patent owner, that must be considered when selecting evidence to be submitted in a PTAB trial.

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  • January 25, 2016

    Attacking a Patent at the PTO: Beware the Real Party in Interest

    by Eugene Perez | Corporate Counsel

    Patents are critical to the success of many companies, where having a good patent portfolio can protect commercial products, keep competitors out of the market and force licensing negotiations. Given the amount of patent litigation, with the latest patent reform laws of 2011, Congress has created new ways to attack and defend patents at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office (PTO) instead of district court or the International Trade Commission. The idea was to create an alternative forum for contesting patent validity and to reduce the amount of patent litigation. However, around 80 percent of PTAB procedures have concurrent litigation, though sometimes a stay in the litigation is possible. These PTO procedures are called post-grant review (PGR), inter partes review (IPR) and a PGR solely for business method patents (CBM), with IPR being by far the most popular.

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  • November 25, 2015

    Getting The Last Word In PTAB Trials

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | Law360

    Trials before the Patent Trial and Appeal Board are governed by specific rules that provide limited opportunities to make arguments and present evidence. The last substantive filing that is allowed as a matter of right depends on whether or not a patent owner files a motion to amend,[1] and will generally either be the petitioner’s reply or the patent owner’s reply in support of its motion to amend. Nevertheless, procedures are available after the last reply, whereby the other party can possibly have the last word in a PTAB trial. Examples of these procedures include seeking leave to file a sur-reply, to file observations on cross-examination, to file arguments based on the observations on cross-examination, or to seek a waiver of a rule if a party perceives that rule prevents it from having the due process rights to which it is entitled.

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  • October 1, 2015

    Post Therasense: Why Supplemental Examination is Less Attractive

    by Eugene Perez and Chad Rink | World Intellectual Property Review

    It is likely that Therasense is the main reason that supplemental examination filings are so low and may not ramp up any time in the near future.

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  • September 29, 2015

    Supplementing the Record in PTAB Trials by Filing Supplemental Information

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | Bloomberg BNA’s Patent, Trademark, & Copyright Journal

    This article discusses how a party can supplement its case during an inter partes review (IPR) trial, primarily by asking for permission to file ‘‘Supplemental Information.’’ During preparation of this article, over 25 orders from the PTAB were reviewed.

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  • September 15, 2015

    IP Update, Vol. 13, No. 7

    by Marc S. Weiner and MaryAnne Armstrong, Ph.D. | BSKB

    On August 13, 2015, Court of Appeals for the Federal Circuit (CAFC) issued their per curiam decision regarding liability for divided infringement under §271(a). Akamai Technologies, Inc. v. Limelight Networks, Inc. CAFC Case Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417. Previously, on May 13, 2015, the CAFC handed down their decision in the Limelight remand from the Supreme Court of the United States (SCOTUS). CAFC Case No. 2009-1372. In the remanded decision of May 13, 2015, the court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. The CAFC then reconsidered the May 13, 2015 decision with an en banc panel.

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  • August 4, 2015

    IP Update, Vol. 13, No. 6

    by Marc S. Weiner and MaryAnne Armstrong, Ph.D. | BSKB

    The July 30, 2015 Federal Register issued a statement that after receiving over sixty (60) comments from the public on on the 2014 Interim Patent Eligibility Guidance, the USPTO has produced a July 2015 Update: Subject Matter Eligibility.

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  • July 21, 2015

    CAFC Decides Limelight Remand from U.S. Supreme Court

    by MaryAnne Armstrong, Ph.D. | IP Frontline

    On May 13, 2015, the CAFC handed down their decision in the Limelight remand. CAFC Case No. 2009-1372. The court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. A full understanding of the CAFC decision in Limelight requires a review of the procedural history of the case.

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  • July 10, 2015

    In re Cuozzo and the Broadest Reasonable Interpretation Standard – Should the Ability to Amend Be Relevant or Is It a Convenient Excuse?

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | BSKB

    On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court.

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  • July 1, 2015

    IP Update, Vol. 13, No. 5

    by Marc S. Weiner and MaryAnne Armstrong, Ph.D. | BSKB

    On May 13, 2015, the CAFC handed down their decision in the Limelight remand. CAFC Case No. 2009-1372. The court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. A full understanding of the CAFC decision in Limelight requires a review of the procedural history of the case.

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  • June 1, 2015

    Method Patents: Questions of Diagnosis

    by MaryAnne Armstrong, Ph.D. | Life Sciences Intellectual Property Review

    Current US law makes it challenging for companies to establish infringement liability for third parties selling assays to be used in patented diagnostic methods or for third parties performing the critical (but not all) steps of a patented diagnostic method.

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  • May 31, 2015

    New Claim Construction in IPR and PGR

    by Eugene Perez | World Intellectual Property Review

    While the rate of filings for a postgrant review (PGR) trial has been slow, the rate of petitions filed to request an inter partes review (IPR) or a PGR specifically for a covered business method (CBM) patent trial have exceeded expectations. The rate of granting PGRs is around 70% for the fiscal year 2015, although it was higher in previous fiscal years. Once instituted, the petitioner has succeeded in canceling patent claims in more than 70% of cases.

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  • May 6, 2015

    IP Update, Vol. 13, No. 5

    by Marc S. Weiner and Chad M. Rink | BSKB

    As mentioned in the IP Update from April 2, 2015, the Final Rules to the Hague Agreement concerning International Registration of Industrial Designs were issued in the Federal Register.

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  • April 2, 2015

    IP Update, Vol. 13, No. 3

    by Marc S. Weiner | BSKB

    Today’s Federal Register posted the Final Rules to the Hague Agreement Concerning International Registration of Industrial Designs. A copy of the Final Rules can be found here.

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  • January 20, 2015

    IP Update, Vol. 13, No. 2

    by Marc S. Weiner | BSKB

    On January 9, 2015, the USPTO issued a final rule, Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, setting forth final rule changes. The Notice (linked here)implements changes clarifying many PTA issues and implementing the holding of Novartis v. Lee, which are discussed below.

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  • January 5, 2015

    IP Update, Vol. 13, No. 1

    by Marc S. Weiner | BSKB

    On December 16, 2014, the U.S. Patent and Trademark Office (USPTO) published Interim Eligibility Guidance (linked here) that offers the USPTO’s current view of subject matter eligibility in line with the U.S. Supreme Court decisions in Alice Corp. [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.__, 134 S. Ct. 2347 (2014)], Myriad [Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013)], Mayo [Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012)] and related case law. This December 16, 2014 Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Instructions in view of the Supreme Court decision in Alice Corp. and supersedes the March 4, 2014 USPTO procedures issued in view of the Supreme Court decisions in Myriad and Mayo. Since this is Interim Guidance, the USPTO is seeking public comment and suggestions.

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  • December 15, 2014

    IP Update, Vol. 12, No. 8

    by Marc S. Weiner and Aslan Ettehadieh | BSKB

    Earlier this year, the United States Patent and Trademark Office (USPTO) initiated a new program called the Glossary Pilot Program.This new program was designed for the USPTO to study how the use of a glossary section in the specification of a patent application would improve the clarity of the patented claims.In order to participate in this program, numerous requirements must first be met. For example, one key requirement is that a glossary must be included within the specification.Another key requirement is that the application must be classified in software-related technological fields under the jurisdiction of Technology Centers 2100, 2400, 2600, or the Business Methods area of Technology Center 3600.Upon acceptance into this program, the USPTO will provide the expedited examination of the application (only) up to the mailing of the first Office Action.

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  • September 30, 2014

    IP Update, Vol. 12, No. 7

    by Marc S. Weiner and Aslan Ettehadieh | BSKB

    The After Final Consideration Pilot (AFCP) 2.0 program was scheduled to expire on September 30, 2014. However, the USPTO has recently announced that the AFCP 2.0 program has been extended to run through September 30, 2015.

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