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

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Conducted on Thursday, December 12, 2019

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Course Materials

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.

Description

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.

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Outline

  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

Benefits

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?

Faculty

Carlson, Steven
Steven C. Carlson
Partner
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
Partner
Ropes & Gray

Mr. McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the...  |  Read More

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