On the record with Ashley Keller

I recently had the opportunity to chat on the record with Ashley Keller, a co-founder of Gerchen Keller Capital, about monetizing patent rights and the patent market in general. Gerchen Keller provides capital and other financing solutions to companies and law firms involved in complex litigation, including patent litigation. Ashley serves as the firm’s Managing Director. Prior to co-founding Gerchen Keller, Ashley was a litigation partner at Bartlit Beck Herman Palenchar & Scott LLP, where he handled a variety of patent litigation matters, among other things. Ashley also has the distinction of being a member of a relatively small club of Supreme Court law clerks. He served as a law clerk for Judge Richard Posner at the U.S. Court of Appeals for the Seventh Circuit and Justice Anthony M. Kennedy at the Supreme Court of the United States.

What follows are excerpts from my interview with Keller, which took place on November 5, 2015. To read the complete transcript, please see The difficult environment for monetizing patent rights.

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12.1.15 | Patent Issues | Gene Quinn

US and Brazil enter into Patent Prosecution Highway agreement

The United States Patent and Trademark Office (USPTO) and Brazil’s National Institute for Industrial Property (INPI) have agreed to establish a Patent Prosecution Highway (PPH) pilot program. The United States Patent Office likes PPH applications because they take significantly less time to prosecute, on average, than non-PPH applications. This is as a result of being able to re-use information, such as previous search and examination results, between and among the USPTO and partner patent offices.

PPH agreements are cooperative initiatives that streamline the patent examination process by promoting expeditious, less costly, and more effective patent protection. The USPTO and INPI plan to launch the two-year pilot program on January 11, 2016.

“This agreement strengthens the economic relationship between the United States and Brazil and further highlights the commitment both countries have made to provide a high quality and efficient intellectual property system that will make it easier for innovators of all sizes to do business in a global economy,” said Michelle Lee, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

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11.30.15 | posts | Gene Quinn

Is Inter Partes Review Good for the Patent System?

The America Invents Act (AIA) ushered in a new era for patent law and procedure at the United States Patent and Trademark Office. Among the changes that took effect were the much-debated shift away from the first-to-invent standard and to a first-to-file standard that is far more consistent with the rest of the world, although not identical.

Philosophically, the shift to a first-to-file system represents a major shift, but in truth, the U.S. had a de facto first-to-file system already. It had been years since a small entity (i.e., a company with 500 or fewer employees) had been able to prevail by demonstrating that they invented before another party filed a patent application. For the most part, much of the focus on first-to-file has done nothing more than divert attention from the most significant change from the patent owners perspective….

There is little doubt that the largest change ushered in by the AIA was the creation of administrative patent trials, namely Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review.

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Federal Circuit to consider On Sale Bar en banc

On November 13, 2015, the United States Court of Appeals for the Federal Circuit decided to take a case en banc that will require the court to resolve issues relating to the on-sale bar of pre-AIA 35 U.S.C. § 102(b).

The case is The Medicines Company v. Hospira, Inc., which was decided by Judges Dyk, Wallach, and Hughes on July 2, 2015. The original panel decision, which was authored by Judge Hughes, has been vacated and the appeal reinstated.

The Medicines Company filed a combined petition for panel rehearing and rehearing en banc. The petition was considered by the panel that heard the appeal and thereafter referred to those judges on the full court who are in regular active service (i.e., judges on senior status who did not participate in the panel hearing do not participate in en banc petitions). A response was invited by the court and filed by defendant/cross-appellant Hospira, Inc.

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11.25.15 | CAFC, Patent Issues, posts | Gene Quinn

Quinn, Cuban talk software patents, business of innovation

Recently, IPWatchdog.com has published a series of articles relating to Mark Cuban’s activities and views relative to the patent system. (See here, here and here.) Cuban is no stranger to the patent policy debate, and has gone on the record numerous times explaining that he thinks software patents should be abolished. In fact, he famously donated $250,000 to the Electronic Frontier Foundation for the creation of the Mark Cuban Chair to Eliminate Stupid Patents.

In the comments to the aforementioned articles, Mark Cuban engaged in a spirited back and forth with readers, and with me. I invited him to do an interview with me. He agreed and we conducted an e-mail interview. To read the full interview, please see A patent conversation with Mark Cuban.

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11.13.15 | Patent Issues, software patents | Gene Quinn

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