Scott McKeown

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Previous PTAB Opinions Designated Precedential Yesterday, the Patent Trial & Appeal Board (PTAB) designated two older AIA trial decisions, and one recent decision, precedential. These three decisions follow last week’s Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, which held issue joinder was embraced by 35 U.S.C. § 315(c), but a matter of Board discretion. Since the revision of its Standard Operating Procedure (SOP) for designating precedential and informative decisions (SOP2), it is expected…
PLI Program to Focus on New Patent Owner Opportunities The USPTO’s Patent Trial and Appeal Board (PTAB) is in the midst of a historic makeover. New leadership has recently introduced significant changes. These changes are designed to rebalance AIA trial practices to allow patent owners a fighting chance. From new claim construction standards, amendment options, revised 101 guidelines, expanded equitable assessments under 314(a), the game has changed. Please join me today at 3PM (EST) for the Practising…
PTAB Amendment Pilot Effective Today Today, the Patent Trial & Appeal Board (PTAB) published the final Pilot Program for Motions to Amend in the Federal Register (here). The Pilot will run for one year, and is applicable to all AIA trial proceedings instituted going forward. (i.e., proceedings instituted before 3/15 are ineligible). The published Pilot carries forward the main idea of the initial RFC — feedback to the Patent Owner on its Motion…
Issue Joinder Debate Comes Full Circle As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38) The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More…
Judge Scott Boalick Formally Appointed Chief The United States Patent and Trademark Office (USPTO) announced today the appointment of Scott Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB). Boalick has served as the acting Chief Judge for the PTAB since September 2018. Boalick begins his permanent role today. Boalick was appointed to the Board in 2007. Prior to becoming the acting chief judge, he served as an administrative patent judge, lead…
Plenty of March CLE Programs to Choose From There are quite a few Patent Trial & Appeal Board (PTAB) related CLE events over the next few weeks. First, today, the PatentsPostGrant March Webinar will cover Patent Derivation, Trade Secret Misappropriation & Inventorship Disputes @2PM (EST).  This program will cover the full breadth of considerations facing research heavy technologies (e.g., Bio/Pharma, semiconductor, etc) under the America Invents Act (AIA). Register (here)  Later this week, the …
PTAB Updates Amendment Precedent Today, the Patent Trial & Appeal Board (PTAB) designated Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to the agency’s interpretation of 35 U.S.C § 316(d), amendment requirements and burden. The Order provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law. Specifically, the order sets forth guidance, such as: (1) contingent motions to amend;…
Unified Patents’ PTAB Database & Analytics While Patent Trial & Appeal Board (PTAB) documents may be accessed by the USPTO’s PTABE2E portal, this portal offers minimal search options and no analytics whatsoever.  When looking for more than just a straightforward document retrieval (i.e., most of the time), I use Unified Patents free PTAB portal (here). The Unified Portal offers a host of helpful analytics on both PTAB and district court litigation filing trends,…
Close Trial Date to Doom Parallel IPR Petitions? Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).…
Burden on Patent Owner to Show Product Manual Available Does the use of a printed manual at the PTAB foreclose later use of the underlying product in litigation? We know from cases like In Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) that where a product is superior to a publication in terms of relevant detail, it is considered outside of the reach of 315(e) estoppel. But what about where…