PTAB Practice Briefing

Co-Chairs Opening Remarks

Honorable Teresa Rea
Partner
Crowell & Moring LLP (Washington, DC)
Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office

J. Steven Baughman
Partner
Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

Year in Review at the PTAB: A Look Back at 2021’s Most Significant Developments

J. Steven Baughman
Partner
Paul, Weiss, Rifkind, Wharton & Garrison LLP (Washington, DC)

Jonathan Stroud
Chief IP Counsel
Unified Patents (Washington, DC)

From a change of administration in Washington to important developments at the PTAB and the courts, we reflect on some of the most significant aspects of 2021 and how these changes this will help shape the year ahead for the PTAB and industry stakeholders.

Exploring the Impact Post-Arthrex on Future PTAB Proceedings

Sara Tonnies Horton
Partner
Willkie Farr & Gallagher LLP (Chicago, IL)

Efrain Staino
Vice President, IP Litigation
Xperi Corporation (San Francisco, CA)

Matt Anderson
VP, IP Litigation, Disputes & Neuroscience Portfolio
Medtronic (Boulder, CO)

Moderator:

Naveen Modi
Partner and Global Vice-Chair, Intellectual Property and Chair, Patent Office Practice
Paul Hastings LLP (Washington, DC)

The Supreme Court’s long anticipated decision in US v. Arthrex, Inc. is an important rendering for PTAB stakeholders given its potential impact on both past and future IPR proceedings and outcomes. The Court concluded that while PTAB Judges were unconstitutionally appointed as principal officers, but handed the PTO Director the power to review PTAB decisions. Our panel of leading PTAB practitioners will explore the practical implications of this decision. Points of discussion will include:

• Exploring the Supreme Court’s constitutional remedies in US v. Arthrex, Inc.
  • Evaluating the decision’s impact on pending IPR and other proceedings
• Reviewing the decision and its implications for the PTO and PTAB
  • Federal circuit update on supplemental briefings
• Examining how this effects IPR proceedings and the interplay with Federal Courts
• Assessing the PTO Interim Director Review Process post-Arthrex
  • PTAB’s Q&A on Interim Director review process

Networking Break

Think Tank: Recent Developments and the Future Direction of IPR Proceedings

Tom Brown
Senior Legal Director, Head of IP Litigation
Dell (Boston, MA)

Kenneth Korea
Founder & Principal
Colev Law, P.C. (Los Gatos, CA)

Scott A. McKeown
Partner
Ropes and Gray (Washington, DC)

2021 has been a busy year for the PTAB and IPR proceedings, given the Arthrex decision and the pending appointment of the Interim Director. As we look back on some of the most important issues and trends impacting the PTAB community, and prognosticate on what lies ahead, our panel of speakers will review and discuss some of the most important developments and what this means for the various sectors.

• Examining recent trends and statistics in IPR proceedings
  • Precedential Decisions and Guidelines
• Reviewing the new ‘pilot program’ concerning motions to amend
  • What does the data show 2 years into the program?
  • How well received were the changes?
• Evaluating treatment of applicant admitted prior art (AAPA) in a patent challenged in an IPR
  • 35 U.S.C. § 311(b)
• Exploring the evolving law of estoppel, the scope of review under §315(e)(2) and related consequences
• Analyzing recent PTAB and Federal Circuit decisions and their industry impact:
  • Tech
  • Financial Services
  • Pharmaceutical/Life Sciences

Lunch and Networking Break

Parsing the Future Policy Direction of the PTO

Honorable Joseph Matal
Partner
Haynes and Boone, LLP (Washington, DC)
(Former Acting Under Secretary of Commerce for Intellectual Property and Former Acting Director of the United States Patent and Trademark Office; Former Acting Deputy General Counsel for Intellectual Property Law and Acting Solicitor of the United States Patent and Trademark Office)

Donna Meuth
Associate General Counsel, Intellectual Property
Esiai (Boston, MA)

Nicholas Kim
Senior Corporate Counsel
Microsoft Corporation (Redmond, Washington)

The new Administration’s appointment of a USPTO Director may have significant implications for the direction of patent policy, thus impacting multiple industries and their strategies for monetizing IP assets. Further, this could mean a new course in IP policy impacting the patent protection pendulum as stakeholders seek to influence outcomes. What policy changes might be expected going forward? Which industries might turn out be the “winners or losers”?

Analyzing potential changes in policy focus, new legislative initiatives, and their anticipated impact on current patent system

• Discuss the context of patent policy direction in the context of geopolitical challenges and the U.S.’s standing on innovation
• Explore what the new review process will look like with the new PTO Director post-Arthrex

Break

Examining the Increased Use of Discretionary Denials by the PTAB and its Effect on Litigation Strategies

Kevin R. Greenleaf
Counsel
Dentons (Mountain View, CA)

David Lorenz
Assistant General Counsel
BASF Corp.

The PTAB has the discretion in deciding which petitions to deny, often based on parallel proceedings or prior art. Given recent concerns over the increase in institutional discretionary denials, this session will address:

• Reviewing the current use, status, and trends of discretionary denials (35 U.S.C. Section 314(a)/ Section 325(d)) and future direction
  • Discuss the application of Fintiv factors when exercising discretionary denials
• Evaluating strategic considerations when preparing or responding to petitions
  • What other circumstances could impact the PTABs use of discretionary denial?
• Analyzing how Arthrex and the PTO review might affect the use of denials in future proceedings
• Predicting how future PTO leadership and policy changes may impact IPR denials and impacts on industries

Break

PTAB Judges Roundtable

Honorable Stacey G. White
Lead Administrative Patent Judge
Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Honorable Ken Barrett
Administrative Patent Judge
Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Honorable Phil Kauffman
Administrative Patent Judge
Patent Trial and Appeal Board, USPTO (Alexandria, VA)

Moderator:

Karl Renner
Principal
Fish & Richardson P.C. (Washington, DC)

This panel offers a unique opportunity to hear inside perspectives from PTAB Judges on best practices for successful post-grant proceedings, tips for success, as well as practice pitfalls to avoid. They will also examine other recent developments and potential future changes impacting PTAB stakeholders. The panel will also discuss the interplay between the PTAB, district courts, and the Federal Circuit.

Closing Remarks and Conference Concludes