Interested in training for your team? Click here to learn more

Using PTAB Proceedings to Challenge and Defend Patents: Standing, Serial IPRs, and Unintended Consequences

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, December 12, 2019

Recorded event now available

or call 1-800-926-7926

This CLE course will guide counsel on the strategic use of Patent Trial and Appeal Board (PTAB) proceedings. The panel will discuss how companies are leveraging the PTAB system, as well as the risks involved. The panel will also examine what small companies and startups can do to counter challenges from larger competitors.


The PTAB provides established companies powerful leverage to pressure the patent portfolios of startups. For example, unlike the district courts, there is no case or controversy requirement or cost-intensive discovery, and the legal spend is significantly less. Larger companies can even preemptively file petitions attacking the patent portfolio of smaller competitors on behalf of their customer/suppliers as a way to pressure the startup to license out its technology.

However, PTAB patent challenges are not risk-free. Some challenged claims may survive a PTAB attack, making them tougher to defeat given statutory estoppel protections. Also, it may be easier for the startup to make a case for willfulness, or to leverage admissions on claims scope or PTAB fact findings in later infringement proceedings.

To survive the PTAB, patent owners must not only avoid common trial missteps, but to plan in advance of PTAB challenges.

Listen as our authoritative panel of patent attorneys examines how companies are relying on preemptive filings in the PTAB, including a discussion of the underlying rules. The panel will also discuss what smaller companies and startups can do to counter a challenge from large patent holders and protect their patent rights.



  1. PTAB proceedings as leverage for larger companies
    1. Rules that permit
    2. Risks
    3. Single petition
    4. Multiple petitions
  2. PTAB proceedings from the perspective of startups and small companies
    1. Patent portfolio as asset and liability
    2. Response strategies
    3. Funding challenges--for the PTAB and in the marketplace
  3. Case study


The panel will review these and other key issues:

  • How are large, well-funded companies leveraging PTAB patent challenge mechanisms to challenge the patents of smaller patent holders?
  • What strategies are patent owners employing to succeed at the PTAB? What considerations do they need to keep in mind as they defend their patents?
  • Are claim amendments worthwhile? What is the most effective evidence for patent owners facing an obviousness challenge?
  • What proactive steps can counsel take to minimize the threat of PTAB challenges?


Carlson, Steven
Steven C. Carlson

Robins Kaplan

Mr. Carlson is an IP litigator who draws upon national and international experience to assist clients with a wide range...  |  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

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video