PTAB Trial Practice: New Trial Guidance, and Precedential and Informative Decisions
Implications for Discretionary Institution, Discovery, Claim Construction, Joinder, Amendment Practice, and More
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide patent counsel with insights on the new Patent Trial and Appeal Board (PTAB) trial practice guidance, focusing on claim construction, amendment practice, additional discovery, joinder, institution decisions, and much more. The panel will discuss the implications of the new guidance and what counsel needs to do now.
Outline
- 2019 Updated Guidance
- Additional discovery -- factors that may be considered by the Board in determining when additional discovery will be granted
- Revised claim construction standard to be used in IPR, PGR, and CBM proceedings
- Testimonial evidence with a POPR
- Motion to Amend practice and Opposition to a Motion to Amend
- Motion for joinder -- factors that may be considered by the Board in determining whether to grant the motion
- Motions to seal, and procedures for modifications to the default protective order
- Procedures for remand
- Precedential and Informative Decisions on Discretionary Institution
- Expansion of the General Plastic factors
- Relationship between petitioners when multiple petitions are filed against the same patent
- The impact co-pending litigation may have on the PTAB’s discretion to institute
- New ranking requirement for parallel petitions challenging the same patent
- Post-SAS implications for institution
- Consideration of petitions using prior art that was previously considered by the Office
Benefits
The panel will review these and other high priority issues:
- Claim construction practice
- Amendment practice
- Joinder practice
- Additional discovery
Faculty

Jonathan R. Bowser
Counsel
Haynes and Boone
Mr. Bowser focuses his practice on intellectual property law, with a special emphasis on inter partes matters before... | Read More
Mr. Bowser focuses his practice on intellectual property law, with a special emphasis on inter partes matters before the Patent Trial and Appeal Board, in federal courts, and before the U.S. International Trade Commission. He specializes in challenging and defending the validity of patents in post-grant proceedings including inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, ex parte reexamination, and reissue applications. He also specializes in client counseling including preparing opinions on validity, freedom to operate, and infringement. In addition, he assists clients in leveraging their patent rights through the evaluation, licensing and/or sale of patents.
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Kevin B. Laurence
Partner
Laurence & Phillips
Mr. Laurence has represented patent owners and petitioners in nearly 60 inter partes review proceedings at the Patent... | Read More
Mr. Laurence has represented patent owners and petitioners in nearly 60 inter partes review proceedings at the Patent Trial and Appeal Board. His experience with high-stakes, post-grant proceedings spans a broad spectrum of technologies. He teaches a course as an adjunct professor at the George Washington University Law School on post-grant patent practice. He has also served as an instructor for Patent Resources Group since 2009 in courses on post-grant proceedings and co-authors a two-volume treatise titled Post-Grant Patent Practice provided in conjunction with the courses. Best Lawyers in America named Mr. Laurence their 2016 “Lawyer of the Year” in Patent Law for Washington, D.C.
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