Brinks Gilson & Lione attorney: “New Patent Office study confirms motions to amend in PTAB proceedings have been largely unsuccessful”

James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, says a United States Patent Office’s (USPTO) study released May 9 on the Patent Trial and Appeal Board (“PTAB”) confirms that motions to amend have been largely unsuccessful.

In response to claims by patent owners that PTAB has raised the bar too high to amend claims of a patent in response to validity challenges under the America Invents Act (“AIA”), the USPTO conducted a detailed study of all motions to amend in post-grant proceedings to date. The study found that of 4,850 total petitions filed since September 16, 2012, 1,539 have resulted in completed trials and 743 have trials pending. Of those 1,539 completed trials, a patent owner has filed a motion to amend in 192 of the completed trials. Of those 743 cases that are still pending trial, a patent owner has filed a motion to amend in 34 instances.

Accordingly, of the 2,282 total instances in which the PTAB instituted trial in an AIA challenge, a motion to amend has only been filed in approximately 10% of the cases.

“The data establishes that patent owners are not attempting to amend their claims very often,” Cleland said. “Further data provided by the USPTO may suggest why: only approximately 5% of all motions to amend have been at least partially successful and led to the issuance of at least one new amended claim. However, it is also worth noting that of the six motions that were granted at least in part, most of those successful motions have been adjudicated in the last year or two.”

Cleland is referring to data provided by the USPTO that shows that of the 192 motions to amend in trials already completed, the PTAB has rendered a substantive decision on the motion to amend in 118 cases. The other cases either settled before a decision on the motion or involved the cancellation of claims, not the amendment of claims. Of the 118 cases involving a PTAB ruling, two of the motions to amend were granted in full, four were granted in part, and 112 were denied.

Cleland says the USPTO’s study suggests that it is still difficult to amend claims during post-grant proceedings, and that it is not a tool frequently used by patent owners.

“Despite the study results, though, the PTAB is still encouraging patent owners to file motions to amend,” Cleland said. “This may suggest that the PTAB judges will start to be more receptive to motions to amend and that we may see an uptick in the success rates of these motions in the near future.”

At Brinks, Cleland’s practice focuses on patent, trademark, copyright, trade secret and unfair competition litigation in a broad range of technologies including the chemical, automotive, materials science, mechanical, electrical and medical device arts, as well as in client counseling, opinion and licensing work in those same areas. His litigation experience includes trials, preliminary injunction hearings, Markman hearings summary judgment proceedings and all aspects of fact and expert witness discovery, spanning federal courts across the country. Cleland also specializes in post grant review proceedings before the Patent Trial and Appeal Board.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.

Brinks Gilson & Lione attorney to serve as panelist at IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB

ANN ARBOR – Maya 5, 2016 – Jon Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, will be a presenter in the Momentum IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB on May 11 in San Jose, California.

Beaupré will serve as the moderator for a panel topic, “Building Your IP Litigation Dream Team – Tips for Selecting, Screening & Managing Outside Counsel to Oversee PTAB Proceedings.” The panel will provide insight on how to:
• Screen counsel’s actual hands-on experience at the PTAB
• Weigh the pros and cons of a joint defense agreement in the PTAB context
• Evaluate a firm’s work product in this unique forum
• Remain in the driver’s seat and control your litigation strategy
• Oversee a tight litigation budget

At Brinks, Beaupré is co-chair of the Post-Grant Patent Group. His practice includes all areas of intellectual property litigation, including patent litigation, trademark and false advertising disputes, and trade secret and unfair competition litigation. Beaupré also counsels clients on intellectual asset management and prepares agreements and licenses. He practices in a wide array of forums, including federal courts, the Patent Trial and Appeal Board, the International Trade Commission and the United States Court of Appeals for the Federal Circuit.

To learn more about the event, visit the Momentum website.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.

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Brooks Kushman Ranked in Top 2015 PTAB Firms by Docket Navigator

SOUTHFIELD, Mich. — Brooks Kushman has been named one of the top Patent Trial and Appeal Board (PTAB) law firms in a 2015 annual report published by Docket Navigator. The list includes top law firms and corporate legal departments ranked by the number of inter partes review, covered business methods, and post grant review proceedings in 2015 in which the organization represented one of the litigants. In 2015 there were 1,797 new patent litigation proceedings in the PTAB, a 7% increase over 2014.

Docket Navigator provides a set of powerful research and reporting tools for high stakes litigation including an alert service with automatic updates for patent litigation decisions using a proprietary database developed and maintained by seasoned patent litigators. Their Docket Report extracts data from government sources such as Public Access to Court Electronic Records (PACER), U.S. Patent and Trademark Office databases, and Electronic Data Information Source (EDIS). Editors manually clean, normalize and correct data followed by a refined review of experienced US patent litigators and agents who code, classify and summarize the data by hand.

In addition to the firm’s ranking, Brooks Kushman Shareholder Frank Angileri was ranked one of the top PTAB attorneys as measured by number of inter partes review, covered business methods, and post grant review proceedings in 2015 in which the attorney represented one of the litigants.

The full Docket Navigator report can be accessed here.

About Brooks Kushman P.C.
Brooks Kushman P.C. is a leading intellectual property (IP) and technology law firm with offices in Michigan and California, and represents clients nationally and internationally with respect to protection, enforcement and monetization of IP, including patents, trademarks, copyrights and trade secrets. The firm has more than 90 intellectual property professionals specializing in various technical disciplines, and has a reputation for providing leading IP counseling with a focus on the business objectives of their clients.

Brooks Kushman counts a number of Fortune 100 companies across a variety of industries among its clients. The firm is also recognized by leading legal publications and rankings, including Corporate Counsel magazine, U.S. News & World Report, Law360, Intellectual Asset Management, Managing Intellectual Property, World Trademark Review, and Intellectual Property Today. For more information, please visit www.BrooksKushman.com.

Brinks Gilson & Lione attorney presents at Sports & Fitness Industry Association Summit

James Cleland, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., served as a presenter at the Sports & Fitness Industry Association’s (SFIA) 2016 Litigation, Regulatory & Risk Management Summit (LR2MS) held Feb. 1-2 in New Orleans. The summit provided attendees guidance on navigating the changing landscape of legal risk and regulatory threats related to the sports and fitness industry.
Cleland, who is a member of the legal task force of SFIA, delivered a presentation entitled, “A New Weapon in the Patent Litigation Wars: Challenging Patents at the PTO Using Post-Grant Proceedings,” on Feb. 2 at the summit. The session focused on the importance of inter partes review practice and how businesses in the sports and fitness industry have a new and often overlooked weapon in challenging a patent’s validity. The presentation addressed how using IPRs at the Patent Trial & Appeal Board (PTAB) can be faster, reduce costs and help achieve success in patent litigation.
At Brinks, Cleland’s practice focuses on patent, trademark, copyright, trade secret and unfair competition litigation in a broad range of technologies including the chemical, automotive, materials science, mechanical, electrical and medical device arts, as well as in client counseling, opinion and licensing work in those same areas.

His litigation experience includes trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings and all aspects of fact and expert witness discovery, spanning federal courts across the country. Cleland also specializes in post-grant review proceedings before the Patent Trial and Appeal Board, a forum that is quickly becoming the busiest patent court in the country.

To learn more about the 2016 Litigation, Regulatory & Risk Management Summit (LR2MS), click here.

About Sports & Fitness Industry Association
The Sports & Fitness Industry Association (SFIA), formerly the SGMA, is the trade association of leading industry sports and fitness brands, suppliers, retailers and partners. The organization’s mission is to “Promote Sports and Fitness Participation and Industry Vitality” by focusing on core product areas for the industry. Learn more at www.sfia.org.

Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law.

More information is at www.brinksgilson.com.

Brinks Gilson & Lione attorney to speak at 2nd IP Counsel Exchange on Post-Grant Patent Challenges at the PTAB

ANN ARBOR – March 12, 2015 -Jon H. Beaupré, a shareholder in the Ann Arbor office of Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., will serve as a presenter at the second IP Counsel Exchange on Post-Grant Patent Challenges at the Patent Trial and Appeal Board (PTAB) to be held March 30 – 31 in San Jose, Cali. The counsel exchange serves as a strategic guide to learning how to effectively challenge or defend patent validity at the PTAB.
Beaupré will present “Master Class: A Practitioner’s Guide to Most Effectively Utilizing Experts and Witnesses in PTAB Proceedings; Dissecting the Nuances of Witness Presentation and Posturing at the PTAB” on March 30. The session will focus on how to effectively utilize experts and witnesses in PTAB proceedings, as well as an advanced discussion of key do’s and don’ts.

At Brinks, Beaupré specializes in patent, trademark, copyright, trade secret and unfair competition law in a broad range of technologies including mechanical engineering, medical devices, wireless technology, software technology, business methods and industrial mechanical devices. He also prepares and prosecutes patents, manages patent portfolios and counsels clients regarding various patent issues.

Beaupré’s litigation experience includes reexamination and Inter Partes review proceedings, trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings, and all aspects of fact and expert witness discovery. He has represented clients before the USPTO, the International Trade Commission and the United States Court of Appeals for the Federal Circuit.

To learn more about the 2nd IP Counsel Exchange on Post-Grant Proceedings Challenges at the PTAB, click here.

Brinks Gilson & Lione
The more than 135 attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property, making Brinks one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is available at www.brinksgilson.com.

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Brinks Gilson & Lione launches webinar series on post-grant proceeding developments; first webinar is Sept. 30

ANN ARBOR/DETROIT – Sept. 10, 2014 -Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., announces the Sept. 30 launch of a quarterly webinar series hosted by the firm’s Post-Grant Practice Group. The series will focus on recent developments in post-grant proceedings and will be led by Jon Beaupré, shareholder in the Ann Arbor office; Kelly Burris, managing shareholder of the Detroit office; and Rickard DeMille, attorney in the Chicago office.

The first webinar will be held on Tuesday, Sept. 30 from 1 to 2 p.m. EST and will cover various topics related to post-grant proceedings, including:

  • The latest statistics from the Patent Trial and Appeal Board (PTAB)
  • How to amend claims during post-grant proceedings
  • Examining discovery issues at the PTAB

There is no cost to attend the webinar and one hour of (Illinois) MCLE credit will be available; MCLE credit for other states requiring MCLE is available upon request. Learn more about the event or register here.

About the presenters:

Jon Beaupré, shareholder in the Ann Arbor office, counsels clients and litigates on their behalf in the areas of patent, trademark, copyright, trade secret and unfair competition law. He has represented a wide range of clients, from large multinational entities to small corporations, in federal courts and before the U.S. Patent and Trademark Office, the International Trade Commission, and the United States Court of Appeals for the Federal Circuit. His litigation experience includes trials, preliminary injunction hearings, Markman hearings, summary judgment proceedings, and all aspects of fact and expert witness discovery, as well as reexamination and Inter Partes review proceedings.

Kelly Burris is managing shareholder of Brinks’ Detroit office and co-chair of the firm’s Post-Grant Patent Practice Group. She focuses her practice on the preparation and prosecution of U.S. and foreign patent applications in the mechanical, materials science, and electrical arts. Burris is active with appeal proceedings in the United States Patent and Trademark Office (USPTO), at the Patent Trial and Appeal Board (PTAB).

Rickard DeMille’s intellectual property law practice includes patent prosecution and litigations. His patent practice focuses on the electrical, computer and mechanical arts. In particular, DeMille has experience prosecuting patent applications in fields ranging from semiconductors to software applications to office chairs. His practice also includes preparing and prosecuting petitions for inter partes review, as well as requests for both ex parte and inter partes reexamination with the USPTO.

Brinks Gilson & Lione
Brinks Gilson & Lione has 160 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with advanced degrees in all fields of technology and science. Based in Chicago, Brinks has offices in Washington, D.C., Research Triangle Park, N.C., Ann Arbor, Detroit, Salt Lake City and Indianapolis. More information is at www.brinksgilson.com.

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