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Evolving PTAB Trial Practice: Navigating Complex Procedural Rules

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

Recording of a 90-minute premium CLE webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Wednesday, September 12, 2018

Recorded event now available

or call 1-800-926-7926

This CLE course will guide patent 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.


AIA trial practices of the Patent Trial & Appeal Board (PTAB) have undergone significant change in 2018. From revised trial institution practices post-SAS to increased appellate scrutiny of agency decisions once barred from appeal, best practices before the PTAB are a constantly moving target. But, the most significant changes may be yet to come. With proposed regulatory changes to a district court claim construction standard pending, and expected changes to amendment practices on the immediate horizon, 2018 is shaping up to be the most noteworthy in the PTAB’s short history.

A thorough understanding of this evolving landscape includes not only mastering the unique rules of this forum (including anticipating 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.



  1. Preliminary Proceeding Post-SAS
    1. Petitioner Strategy
      1. Claim Construction (Phillips)
        1. Leveraging Markman
      2. Grounds
      3. Timing/325(d)
      4. RPI/Privy
    2. Patent Owner Strategy
      1. POPR
      2. Claim Construction
    3. Litigation Considerations
      1. Stay?
  2. Trial
    1. Discovery
      1. Depositions
    2. Claim Construction
    3. Amendment
    4. New Evidence?
    5. Sur-reply
    6. Preserving the record for appeal
    7. Motion practice
    8. Oral Hearing
  3. Appeal
  4. Legislation/Changes to Come


The panel will review these and other high priority issues:

  • New claim construction practice
  • Amendment Changes
  • Post-SAS practice
  • Sur-replies
  • New Discovery Opportunities
  • Related litigation strategy
  • Expected Changes in the horizon


Laurence, Kevin
Kevin B. Laurence

Laurence & Phillips

Mr. Laurence has been included in IAM’s list of leading post-grant practitioners every year since...  |  Read More

McKeown, Scott
Scott A. McKeown

Wolf, Greenfield & Sacks

Mr. McKeown is a shareholder with Wolf, Greenfield & Sacks in Washington D.C. and a professorial Lecturer in...  |  Read More

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