On this episode of IPWatchdog Unleashed we speak with Scott McKeown, who is a shareholder at Wolf Greenfield. Scott leads the firm’s post grant patent practice, and he is the author of PatentsPostGrant.com, which provides inside views and news pertaining to the nation’s busiest patent court, the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO). You can listen to our full discussion wherever you get your podcasts (links here) or you can visit IPWatchdog Unleashed on IPWatchdog.com. You can also watch the video below, or on the IPWatchdog YouTube channel.
As many in the industry no doubt know, Scott is recognized as one of the leading authorities on PTAB practice, including inter partes review (IPR) proceedings, post grant review (PGR) proceedings, as well as reexamination and reissue proceedings, which often follow on PTAB proceedings. And Scott is not only a good friend, but he is also the Chair of our annual PTAB program, which took place this year from January 27 to January 29 at IPWatchdog Studios. This conversation with Scott occurred in front of a live studio audience as a part of our PTAB Masters™ 2025 program.
Our conversation was wide ranging but was dominated by discussion of patent reform efforts, whether the PTAB is working as intended, and how bad patents and bad patent prosecution are to blame for the PTAB invalidation rate.
“I think it’s like a lot of things in patent law where we recognize that there are some things that are not working optimally, but we’re not realistic about how to fix it,” McKeown explained. “We have a new director, and we’re in this position right now where it’s a transitional phase, and we could go in a number of directions, but it seems like, at least in D.C., and this is not unique to patent law, but the extremists are dominating the conversation, so we never get to the compromise that would actually work for everybody.”
“I think the PREVAIL Act is a great example of that,” McKeown continued. “I mean, it’s very one-sided, very pro-patent owner, and you have inventor groups lining up to oppose it. They could not draft a more pro-patent owner piece of legislation, and the main people that would benefit, or a good portion of them, are coming out against it as if it’s bad, and that’s what I mean by, it’s this all-or-nothing mentality, and the same thing goes with PERA, on patent eligibility.”
“I mean, it’s hard enough to get attention for patent issues on Capitol Hill unless you present it as, you know, the AIA was a jobs bill, which of course was crazy. That’s ridiculous,” McKeown explained. “It wasn’t a jobs bill. But that’s sort of the extent you have to go to to get the attention from politicians that need to go back to their districts and sell something, like, oh, I fixed patent law. Nobody cares on Main Street about patent law. Well, I created 50,000 jobs, okay, or I’m fighting China. And so, you have to come up with these stories that are very far from reality to get their attention, yet we had their attention on PERA, and that seems to have fallen out of favor for what I view as more extremist bills that just don’t seem to be viable.”
“I don’t know whether it’s to maintain relevance, right? If it never gets fixed, then they’ll always have a purpose,” McKeown offered as one possible reason inventor groups who stand to benefit from pending pro-patent legislation would be actively trying to kill the bills. “But the fallback argument they tend to throw out is, well, you know, this definition in the legislation, we can imagine attorneys will argue about that. Well, what do you think is going on now? I mean, what do you think has been going on for decades? You’ve got Judge Michel and law professors and all of these people going up to Capitol Hill saying, we can’t make heads or tail of this. No one agrees. There are parties that would like a strong change to subject matter eligibility, there’s parties that kind of like confusion, but we all agree that it doesn’t make any sense. And so rarely do you get at least that kind of consensus in D.C. So, to have that and for this still not to be any closer to the finish line than it was pre-COVID when they did all of those hearings, it’s just frustrating.”
We then pivot to a different topic, relating to patent owners continually choosing to pay little to patent attorneys to draft and prosecute patents. Indeed, many PTAB cases are won and lost by decisions that are being made by patent owners based on the budgets, with most clients wanting to pay 1980 prices for 2025 work. And if innovators are paying so little for patent drafting and prosecution it is really no wonder that the claims when challenged fall like a house of cards.
You can read patents and you can know whether they’re written well and they’re written good and they’re tight, and they may not win at the PTAB, the claims may get invalidated, but you can also read patents and say, well, if this ever gets challenged, there’s no chance. And why doesn’t that ever change? I mean, we talked about it, there’s a lot of reasons, but what do you think is the driving force there?
“We can have [vendors] bid and we’ll get these six-page specifications with a five-box flow chart and we’ll just have a box with some other boxes in there and maybe we even outsource the drafting of this to some unknown organization and we’ll just churn these things out and it’s like, it’s cannon fodder and we’ll have enough of them that maybe we’ll have a claim that survives somewhere along the lines,” McKeown explained. “The budgets have been pushed down lower and lower, and it’s really, it’s the claims, it’s the quality of the specifications, it’s the strategy and the structuring of the claims and understanding that picture claims could help you or a random means plus function term or, you know, any number of things that you can do, you know, you can do a lot of incremental things that add up to a patent that’s a lot more difficult to challenge in a petition or a lot more expensive.”
“Bidding out your portfolios to the lowest bidder, you’re not getting that level of strategy or sophistication… And if that’s what your idea of protecting the crown jewels of your organization, you’re going to be very disappointed and the PTAB in that equation is not the problem,” McKeown said.
