PTAB Discretionary Denials: Preparing and Responding to Petitions, Application of the Fintiv Factors
A live 90-minute premium CLE video webinar with interactive Q&A
This CLE course will guide patent counsel on recent discretionary denial trends. The panel will discuss Patent Trial and Appeal Board (PTAB) precedential decisions on discretionary denials and their application in subsequent cases. The panel will offer practice suggestions for petitioners and patent owners.
Outline
- Discretionary denials
- Statistics
- Guidance
- Precedential decisions
- Apple v. Vidal
- Best practices
- Preparing and responding to petitions
- Avoiding discretionary denials
Benefits
The panel will review these and other crucial issues:
- How can practitioners use the lessons of the PTAB denials to learn what patent owners are doing to achieve their ultimate success?
- What best practices should practitioners apply when preparing and prosecuting applications to avoid denials?
Faculty
Joshua L. Goldberg
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Goldberg focuses on patent office proceedings, client counseling, and litigation. Devoting the majority of his time... | Read More
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.
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Sydney R. Kestle
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Kestle focuses on several areas of patent law, including pre-litigation due diligence, client counseling,... | Read More
Ms. Kestle focuses on several areas of patent law, including pre-litigation due diligence, client counseling, litigation in U.S. district courts, proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, and appeals before the U.S. Court of Appeals for the Federal Circuit, where she clerked. Her patent practice covers several technology sectors in the mechanical and electrical arts, including industrial manufacturing, medical devices, and wireless communications and related consumer products.
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Gracie K. Mills
Attorney
Finnegan Henderson Farabow Garrett & Dunner
Ms. Mills focuses on post-grant proceedings at the Patent Trial and Appeal Board of the U.S. Patent and Trademark... | Read More
Ms. Mills focuses on post-grant proceedings at the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, district court patent litigation, and appeals at the U.S. Court of Appeals for the Federal Circuit. She works with clients across electrical and electronic technologies, including semiconductors, computer software, consumer electronics, telecommunications, and financial technologies.
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Trenton A. Ward
Partner
Finnegan Henderson Farabow Garrett & Dunner
As a former Lead Administrative Patent Judge at the Patent Trial and Appeal Board, Mr.... | Read More
As a former Lead Administrative Patent Judge at the Patent Trial and Appeal Board, Mr. Ward was on the front lines of the nascent post-grant review proceedings that have evolved into a prominent position in litigation and business strategies. He draws from his experience on the bench and as a practitioner to provide the highest level of counsel to clients in services ranging from litigation to prosecution and counseling.
CloseEarly Discount (through 03/31/23)
Cannot Attend April 25?
Early Discount (through 03/31/23)
You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.