Latest PTAB Decisions: Leveraging Trends in Institution and Final Written Decisions, Understanding Federal Circuit Scrutiny To Date

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


Conducted on Thursday, March 30, 2017
Recorded event now available


This CLE webinar will analyze the latest precedential and other notable Patent Trial and Appeal Board (PTAB) decisions in 2016 as well as PTAB outcomes at institution and final disposition. The panel will offer IP counsel insight into what these decisions mean going forward and offer best practices for handling inter partes reviews (IPRs), covered business methods (CBMs) and other matters before the PTAB.

Description

The Patent Trial and Appeal Board (PTAB) is the busiest jurisdiction for post-grant challenges to U.S. patents, as district court litigation filings continue their downward trend from a peak in 2013. Filings of petitions in the PTAB for inter partes review (IPR), post-grant review (PGR) and covered business method PGR (CBM) proceedings are approaching almost 2000 per year. Over the past year, there have been several administrative developments, new rules, and notable Federal Circuit decisions in appeals from the PTAB of AIA post-grant proceedings.

Patent counsel can learn a great deal from the PTAB’s institution and final written decisions (FWDs) over the last twelve months, which is the relevant period for this webinar. Counsel must be up-to-date and understand the significant developments over the past year from key PTAB rulings to increase the likelihood of success going forward for its clients.

Prior to mid-2016, the Federal Circuit seemed to be rubber stamping decisions relating to PTAB procedures and decisions, often by Rule 36 affirmance with no written opinion. However, the Federal Circuit now is apparently pushing back, as, for example, in In re Aqua Products, 833 F.3d 1335 (Fed. Cir. 2016) and Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d 1406 (Fed. Cir. 2016), vacating the PTAB’s denial of Patent Owners’ motions to amend. While the affirmance rate remains high, the Federal Circuit has now vacated and remanded or reversed and remanded numerous times, leaving the PTAB to figure out on its own how it should address these cases on remand when there is no procedure set forth in the AIA or current PTAB rules.

Listen as our authoritative panel of patent attorneys with extensive experience in AIA post-grant proceedings provides analysis of the latest precedential and other notable PTAB decisions over the last 12 months. The panel will examine PTAB outcomes both at institution and final disposition, as well as procedural developments during PTAB trials. The panel will also review notable Federal Circuit review of PTAB FWDs over the period, as well as the PTAB’s handling of the cases on remand. They will offer insight into what these decisions mean going forward and offer best practices for handling post-grant proceedings before the PTAB.

Outline

  1. Precedential and other notable PTAB decisions over the last 12 months
  2. PTAB outcomes in CBM, IPR, and PGR
    1. At institution
    2. Final disposition
  3. Federal Circuit appellate decisions of PTAB rulings
  4. Disposition of cases by the PTAB on remand from the CAFC
  5. Best practices for handling AIA post-grant proceedings before the PTAB

Benefits

The panel will review these and other key issues:

  • What are the latest developments regarding PTAB rulings on IPRs, CBMs and other matters? What impact will these developments have on PTAB practice?
  • How have recent Federal Circuit opinions impacted practice at the PTAB?
  • What trends are anticipated for 2017—and how will this change PTAB practice?

Faculty

Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Joshua L. Goldberg, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Goldberg focuses on patent office proceedings, client counseling, and litigation. Devoting the majority of his time to representing petitioners and patent owners in inter partes review and post-grant review proceedings, he regularly manages the preparation of written submissions, takes and defends technical expert depositions, and argues before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. He also develops and manages global patent portfolios, and provides opinions on patent infringement, patent validity, and other intellectual property issues.

Cory C. Bell, Esq.
Finnegan Henderson Farabow Garrett & Dunner, Boston

Mr. Bell focuses on patent prosecution management, client counseling, post-grant practice, and litigation, with an emphasis on electronic technology. He assists in developing patent prosecution strategies for clients with various budgets and desired outcomes. His patent experience began as a patent examiner at the USPTO. He has evaluated thousands of patents and patent applications for licensing, monetization, or sale; assisted in prosecuting hundreds of patent applications; managed patent portfolios; conducted patent landscaping and competitor analysis; and filed patent reexamination, post-grant review, and inter partes review requests.


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David S. Bloch

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Ian N. Feinberg

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Feinberg Day Alberti & Thompson

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