Red Skies on the Horizon—Tracking Developments of Covered Business Method Proceedings and Preparing for the Era of the Post-Grant Review

January 23, 2014 11:30am

Marc V. Richards
Brinks Gilson & Lione

J. Steven Baughman
Ropes & Gray LLP (Washington, DC)


Peter C. Schechter
Osha Liang LLP

• Staying abreast of developments relating to Covered Business Method Proceedings (CBM’s)
– Who has been filing?
– Identifying procedural oddities and practice pitfalls
– Tracking proposed legislation to expand CBM’s to all patent claims
– Analyzing rulings that have come out to date on such issues as obviousness, enablement, and eligibility
– Discussing whether CBM’s could have precedential effect in other proceedings or federal litigation
– Strategies or arguments against precedential effect
• Weighing considerations for when a challenge should be brought under post grant review (PGR)
• Exploring start dates, timing and basis of the application – questions to ask
– Is the challenge brought within nine months of patent issuance?
– What is the basis of the invalidity challenge
• Estoppel considerations looking ahead to potential litigation
• Raising all bases for invalidity lest you be precluded from raising them in other PTO or district court proceedings?
• Examining the mechanics, protocols and procedures for PGR from filing the petition to appearing before PTAB
• Analyzing the petitioner’s burden of proof
• Procedures for appeal