Evolving PTAB Trial Practice: Navigating Complex Procedural Rules

Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend

A live 90-minute CLE webinar with interactive Q&A

Thursday, May 25, 2017 (in 2 days)
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

This CLE webinar will provide guidance to counsel on trends in Patent Trial and Appeal Board (PTAB) trial practice, focusing on motion opportunities, amendment, concurrent reissue/reexamination, evidentiary opportunities, petition missteps and much more.


The PTAB has become the forum of choice for disputing U.S. patent validity. Since its inception, parties have turned to the PTAB for its unprecedented speed, predictability and expert insight. A thorough understanding of this evolving landscape includes not only mastering the unique rules of this forum (including proposed changes), but also an ever changing body of Board informative decisions, and growing CAFC precedent.

Counsel must understand strategic leverage points presented by these proceedings to maximize both patent monetization potential and settlement opportunity.

Listen as our authoritative panel of patent attorneys examines the evolving PTAB trial practice, focusing on discovery, joinder and motions to amend. The panel will discuss guidance issued by the PTAB as well as what can be learned from PTAB decisions over the past year. The panel will offer best practices for strategic trial practice before the PTAB.


  1. Discovery
    1. Mandatory
    2. Routine
    3. Additional
  2. Joinder
  3. Motions to amend


The panel will review these and other key issues:

  • Estoppel
  • Redundancy
  • Joinder
  • Motions to exclude
  • Supplemental evidence vs. supplemental information
  • Rehearing/appeal


Kevin B. Laurence, Partner
Laurence & Phillips, Alexandria, Va.

Mr. Laurence has 24 years of experience in patent law. He has represented patent owners and petitioners in nearly 40 inter partes review (IPR) proceedings at the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. In addition to IPRs, he is also experienced with other post-grant proceedings having handled nearly 30 reexaminations and many reissues, which enables him to develop comprehensive post-grant strategies. He leverages his post-grant experience in prosecution matters to obtain patents for his clients that will survive challenges.

Scott A. McKeown, Partner
Oblon McClelland Maier & Neustadt, Alexandria, Va.

Mr. McKeown chairs the PTAB practice group at Oblon and has served as lead counsel in hundreds of AIA trial proceedings. He leads trial teams responsible for electronics, wireless communications, software and computer-related inventions and business methods through appeals to the Court Of Appeals for the Federal Circuit (CAFC). Scott is also a member of his firm’s Management Committee. Scott is also a Professorial Lecturer in Law at the George Washington University Law School where he teaches post-grant patent practice. He is also the editor of the legal treatise Post-Grant Patent Proceedings Before the Patent Trial & Appeal Board and is the editor of the widely read legal blog PatentsPostGrant.com.

Live Webinar

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This webinar is eligible for at least 1.5 general CLE credits.

CLE credits are not available for PR.

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Patent Law Advisory Board

Charles S. Baker


Fulbright & Jaworski

David S. Bloch


Winston & Strawn

Irah H. Donner


Stroock & Stroock & Lavan

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



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