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PLI's Patent Briefing Series: PTAB Roadblock to Patent Monetization

Recorded on: Feb. 19, 2014
Running Time: 01:07:34

Taken from the briefing PLI's Patent Briefing Series: PTAB Roadblock to Patent Monetization recorded February, 2014.

The patent litigation landscape forever changed on September 16, 2012. On this date the Patent Trial & Appeal Board (PTAB) was born. This Board, the adjudicative body of the United States Patent & Trademark Office (USPTO), consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the America Invents Act. Since 2012 roughly 1000 such challenges have been filed as petitions for Inter Partes Review (IPR) and the transitional Covered Business Method (CBM) challenge proceeding.

The growing popularity of the PTAB is grounded in the practical benefits offered to patent challengers. That is, not only is the PTAB faster and more cost effective than pursuing the same challenge in a federal district court, but it is far more likely to be successful given the lower burden of proof, lack of presumption of validity, broader claim construction, and the technical expertise of the specialized judges. Statistics indicate that 80% of claims challenged at the PTAB are instituted for trial. Further, if the outcome of inter partes reexamination is any gauge on the ultimate outcomes of IPR, CBM and PGR, upward of 85% of patent claims will be cancelled or amended before the PTAB.

The “new normal” created by the PTAB has drastically altered the patent assertion landscape. Moreover, Federal Circuit decisions indicate that once a claim is found invalid by the USPTO, this ruling can trump a finding of validity in the courts if the infringement case is not completed. The implications of findings and rulings in contested proceedings on the parallel litigations are being explored as the first wave of IPR and CBM proceedings conclude at the PTAB.

PLI was a trailblazer in developing the first CLE program dedicated to post grant patent challenges back in 2010, and offered the very first program dedicated solely to the new PTAB challenges of the AIA in 2013. This day long post grant patent conference first introduced many of these emerging topics, and due to popular demand, will be repeated again in March and April of 2014.

Eugene R. Quinn, Jr., the founder of IPWatchDog, one of the most highly acclaimed legal blogs according to a recent ABA award, will moderate this briefing. He will dialogue with leading PTAB specialists Scott A. McKeown and Robert Greene Sterne, the co-chairs of PLI’s one day program on the new contested proceedings world. Messrs. McKeown and Sterne together are handling more of the contested proceedings and the legacy reexaminations than probably any other pair of patent practitioners. They will share their comprehensive perspectives and deep practical insights concerning what is really going on at the PTAB.

This is a must briefing for any attorney practicing in, or advising clients on procuring high value patents, patent licensing, or patent litigation. The patent landscape has changed fundamentally due to these new, low cost challenges to validity, and there is already legislation being proposed that could further expand and change them.

This presentation will be a dialogue that seeks to address questions on the minds of practitioners during this unsettled time.

Lecture Topics  [Total Time: 01:06:54]

Topics/questions that will be addressed include:

  • Getting the attention of the client and explaining what is at stake.
  • Reaction to PTAB and CAFC decisions and predictions about what the future holds.
  • Is it malpractice not to advise a client to pursue post-grant proceedings at the PTAB?
  • What is a trial at the PTAB like? Is this examination or something different?
  • How can a patentee best present the story of the invention?
  • How can a challenger best prove the state of the art and obviousness?
  • Creating a complete record at the PTAB and avoiding waiver.
  • The impact of parallel district court and ITC proceedings involving the same patent.
  • Possible new legislation expanding or changing the current contested proceeding framework?

Presentation Material

  • PLI's Patent Briefing Series: PTAB Roadblock to Patent Monetization
    Scott A. McKeown, Eugene R. Quinn, Jr., Robert Greene Sterne
Matthew J. Gardella ~ Partner, Edwards Angell Palmer & Dodge LLP
Eugene R. Quinn, Jr. ~ President and Founder, IPWatchdog.com, IP Watchdog, Inc.
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.

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