Modern patent practice is all about prior art

The patent process can be expensive, so the last thing you want to do is spend a lot of money preparing and filing an application when there is “knock-out” prior art easily found that will prevent a patent, or at least make any patent that is obtained extremely narrow. For this reason, many choose to begin the patent process with a patent search. Proceeding without a search is particularly problematic today given the likelihood that any valuable patent will be challenged in a post grant proceeding at the Patent Trial and Appeal Board. Getting rights you have confidence in has to be the name of the game.

Challenging patents in post grant proceeding also requires a competent, thorough search too, for many obvious reasons and at least one not-so-obvious reason. When a challenger seeks to take out claims to a patent, the current rules are significantly slanted in favor of the challenger and against the patent owner. The challenger does not really need to take out all the claims to a patent in post grant. Instead, you may opt to find the best prior art available and focus on a limited number of truly vulnerable claims (of which there are typically several to choose). Put all your attention on those vulnerable claims, get those claims declared invalid, and then circle back with a reexamination request where the burden will then be shifted to the patent applicant.

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05.26.17 | Patent Issues | Gene Quinn

Will the Supreme Court ruling on venue really matter?

Almost two months ago, the United States Supreme Court heard oral arguments in TC Heartland LLC v. Kraft Food Group Brands LLC. In deciding to hear this patent venue case, the Supreme Court agreed to decide whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions. Pursuant to § 1400(b), a “patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”

This specific, if not somewhat archaic, issue has tremendous ramifications for the future of how patent litigation will be handled in America. Or so the conventional thinking goes. It is also believed that the Supreme Court resolution of the issue has great significance for patent reform. But Senator Orrin Hatch (R-UT) has also said that, regardless of what the Supreme Court does, Congress will take up the issue of venue reform. What that reform will look like will depend greatly on how the Supreme Court resolves the venue question surrounding § 1400(b).

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USPTO undertakes review of PTAB, IPR proceedings

The United States Patent and Trademark Office (USPTO) recently announced that, at the direction of USPTO Director Michelle Lee (shown left), the Office is launching an initiative “to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review proceedings.” According to the USPTO, the purpose of the initiative is to ensure that post grant proceedings are both effective and as fair as possible.

The timing of the announcement is curious given that Michelle Lee’s days may be numbered as Director of the Office. As first reported on IPWatchdog.com, Commerce Secretary Wilbur Ross has interviewed at least three candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office: Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson; Randall Rader, former Chief Judge of the United States Court of Appeals for the Federal Circuit; and an unidentified patent attorney characterized by one source as a “dark horse” candidate.

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PTAB may invalidate claims federal courts confirmed valid

The United States Court of Appeals for the Federal Circuit recently issued an opinion in Novartis AG v. Noven Pharmaceuticals, Inc., which affirmed the Patent Trial and Appeal Board (PTAB) invalidation of claims in related inter partes review (IPR) proceedings. The IPRs related to U.S. Patent No. 6,316,023 and U.S. Patent No. 6,335,031.

Patent owners losing claims and the Federal Circuit rubber stamping the PTAB isn’t news, sadly. What makes this case different, however, is that these very same patents were previously litigated and the claims were found to be nonobvious in federal district court.

Novartis argued to the Federal Circuit that the arguments presented to the PTAB by Noven, as well as the prior art submitted to support those arguments, were the same as considered during litigation in federal court. The Federal Circuit disagreed, finding that the record in federal court was not identical to the record at the PTAB. But the Federal Circuit went further, saying that even if the records were identical, Novartis’ argument would have to fail.

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PTAB ineffective at eliminating low-quality patents

Those who engage in patent assertion activity are not per se bad actors, or patent trolls, simply because they choose to exercise the exclusive rights granted by the federal government. In fact, the FTC recently acknowledged the term “patent troll” isn’t helpful. “In the Commission’s view, a label like ‘patent troll’ is unhelpful because it invites pre-judgment about the societal impact of patent assertion activity without an understanding of the underlying business model that fuels such activity,” the report reads.

Of course, it is true that the number of patent infringement lawsuits are up significantly compared to the 1980s. It is also true, however, that the increase in patent infringement lawsuits that came after passage of the America Invents Act (AIA) was deemed desirable by Congress. Indeed, it seems that Congress specifically envisioned more patent infringement cases (i.e., a higher volume) because they made the conscious choice to make it difficult (if not impossible) for patent owners to sue large numbers of infringers in the same lawsuit. Thus, the spike in cases that came after 2011 was an intentional feature of the AIA. Even that being the case, quarter after quarter we see patent litigation declining. See herehere and here, for example.

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