What’s In and What’s Out in PTAB AIA Trial Proceedings
Recent and emerging developments continue to reshape the Patent Trial and Appeal Board’s (PTAB’s) America Invents Act (AIA) trial landscape. The Board’s increasing reliance on 35 U.S.C. § 314 discretionary denial is under attack in Google v. Uniloc and by some requests for a congressional investigation. One of the most notable cases is Facebook v. Windy City, which settles the issue of same-party or new issue joinder for inter partes reviews (IPRs). Furthermore, other court cases that practitioners should know of include Sipco v. Emerson Electric, Apple Inc. v. Content Guard Holdings, Inc., and Thryv v. Click-to-call.
Practitioners and clients should stay informed on the latest trends in AIA trial proceedings in order to come up with the most up-to-date and effective trial strategies while mitigating potential risks and pitfalls.
Join seasoned intellectual property lawyers, Brian Murphy (Haug Partners) and William W. Mauke (Lewis Brisbois Bisgaard & Smith LLP), as they bring the audience to a road beyond PTAB AIA trial updates as they delve into an in-depth analysis of some notable patent cases and decisions. Speakers will also provide expert insight on how to bring out the best in these proceedings in a rapidly evolving legal climate.
Key topics include:
- PTAB AIA Trial Proceedings: Significant Trends and Developments
- PTAB’s Increasing Reliance on 35 U.S.C. § 314(a) Discretionary Denial
- High Tech Attack on PTAB Discretionary Denial
- Notable Cases and Court Rulings
- Practical Tips and Strategies
- What Lies Ahead
Lewis Brisbois Bisgaard & Smith LLP
- Common Threads – Recent SCOTUS precedent shows tension within the Court concerning the constitutionality of AIA trial proceedings.
- Cuozzo and SAS – Congress’s clear intention in § 314(d) overcomes the strong presumption in favor of judicial review.
- Thryv v. Click-to-call – expands the Court’s decision in Cuozzo.
- Apple v. ContentGuard Holdings & Sipco v. Emerson Electric - How far will the Court’s decisions in Cuozzo and Thryv reach?
- Oil States and Arthrex – Constitutional challenges to AIA proceedings are not dead.
- Scope of Fed. Cir. Review of PTAB institution decisions §314(d)
- Scope of PTAB discretionary denial authority §314(a)
Who Should Attend:
- Patent Law Attorneys and Consultants
- Intellectual Property Attorneys
- Patent Agents
- Patent Licensing Attorneys
William Mauke is a partner in the Denver office of Lewis Brisbois and a member of the Intellectual Property & Technology Practice. Mr. Mauke has a wide array of experience across multiple disciplines of intellectual property. His primary focuses are IP litigation, patent prosecution, and counseling clients on all areas of intellectual property law. Mr. Mauke has experience with a wide variety of technical disciplines including medical devices, sporting goods, consumer electronics, biotechnology, automotive fuel systems, software and hardware.
Mr. Mauke has experience representing clients while at a law firm, and as in-house counsel. Prior to joining Lewis Brisbois, Mr. Mauke worked as in-house IP Counsel at a large consumer goods company in the San Francisco Bay Area. Before that he worked as an associate attorney at a boutique law firm in Hartford, Connecticut specializing in patent prosecution and IP litigation.
While attending law school, Mr. Mauke represented numerous clients in the University of Connecticut IP Clinic on various intellectual property related matters. Mr. Mauke also contributed to the Connecticut Insurance Law Journal, the University of Connecticut Moot Court Board, the Mock Trial Society, and served as a member of the editorial board of the Insurance Law Journal in his final year of law school. Prior to law school, he worked as a lobbyist in the Connecticut State Legislature, and as an English Lecturer at a public university in Brittany, France.
William Mauke is a partner in the Denver office of Lewis Brisbois and a member of the Intellectual Property & …
Brian Murphy is a partner at Haug Partners in New York City.
From September 2013 through September 2017, Mr. Murphy served as an Administrative Patent Judge at the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office in Alexandria, Virginia. During that time he presided over nearly 200 post grant review trial proceedings (Inter Partes Review, Post Grant Review, and Covered Business Method Review). As a PTAB trial judge he presided over interlocutory discovery and motion proceedings, heard oral argument, and drafted numerous substantive decisions. For three years he also served as a Lead Judge on the PTAB leadership team, which included management, supervision, and mentoring of Administrative Patent Judges trained in the biotechnology, pharmaceutical, and chemical arts. He was a regular speaker at industry conferences on behalf of the PTAB. Prior to joining the PTAB, Mr. Murphy was a patent attorney in New York City with nearly 30 years of experience trying and litigating major patent cases in federal district courts and the International Trade Commission.
Mr. Murphy’s practice includes acting as counsel or as a consultant with clients and counsel involved in PTAB post grant trial proceedings, district court litigation and trials (jury and non-jury), and appeals for clients in the pharmaceutical, biotechnology, medical device, consumer products, telecommunications, and electronics industries. He has particular expertise in Hatch-Waxman patent litigation for branded pharmaceutical companies. His practice also includes providing intellectual property counsel and strategic advice in connection with transactional due diligence, mediation services, and opinions.
Brian Murphy is a partner at Haug Partners in New York City. From September 2013 through September 2017, Mr. Murphy …
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Method of Presentation:
On-demand Webcast (CLE)
General knowledge of intellectual property law
NY Category of CLE Credit:
Areas of Professional Practice
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About Lewis Brisbois Bisgaard & Smith LLP
With more than 1,500 attorneys in 53 offices across the country, Lewis Brisbois dedicates itself to 40 practice areas, including litigation, intellectual property, corporate transactions, and cybersecurity. We serve clients of all sizes, from individual investors and entrepreneurs, to early-stage companies, middle market firms, and long-established conglomerates. Our national bench of attorneys includes strong litigators and skilled transactional attorneys who have the expertise to guide our clients through an entire spectrum of legal matters in every major industry.
Lewis Brisbois has a vibrant and highly skilled Intellectual Property & Technology practice. Our attorneys help clients navigate the intersection between science, technology, and the law. We practice in the areas of patent, trademark, copyright, privacy and security, trade secrets, entertainment, advertising, and promotions. Many of our Intellectual Property & Technology attorneys hold technical degrees in engineering and the sciences.
About Haug Partners
Haug Partners is a full-service, national law firm that provides integrated multidisciplinary legal services for life science and technology companies. Our service offerings include: (i) Antitrust Litigation and Counseling; (ii) Commercial Litigation and Strategic Counseling; (iii) Due Diligence; (iv) FDA Compliance and Counseling; (v) Intellectual Property Enforcement; (vi) Intellectual Property Procurement and Strategy; (vii) International Trade Commission; (viii) Investigations, Compliance, and Risk Mitigation Services; (ix) Licensing and Transactions; and (x) Trademarks and Unfair Competition. With offices in New York, Washington, D.C., and Boston, and through relationships with firms in Germany, China, Japan, and other key international markets, Haug Partners has the resources, technical expertise, legal acumen, and business judgment to consistently deliver optimal outcomes for clients.