Significant PTAB Practice Updates: The Future of Patent Law

Broadcast Date: Wednesday, March 18, 2020 from 12:00 pm to 1:00 pm (ET)

Intellectual Property Law (CLE), Recording

Overview:

In 2019, the United States Patent and Trademark Office (USPTO) continued implementing policy initiatives of Director Iancu that may significantly affect trial practice before the Patent Trial and Appeal Board (PTAB). Some of the developments in 2019 include expansion of the PTAB’s discretion to deny petitions, a new claim amendment process, and the issuance of the first precedential opinions from the recently created Precedential Opinion Panel. In addition to the Director’s initiatives, in Arthrex v. Smith & Nephew, a case whose implications are still being sorted out, the Court of Appeals for the Federal Circuit announced a judicial fix to a constitutional defect in the appointment of PTAB judges.

In this LIVE Webcast, patent law experts Ted M. Cannon (Knobbe Martens) and Brian Murphy (Haug Partners) will provide the audience with an in-depth analysis of these recent developments in the PTAB practice. In addition to discussing Director Iancu’s initiatives and Arthrex generally, the speakers will provide focused insight and practice tips regarding a recent Precedential Opinion Panel decision regarding what evidence is needed to prove that a publication qualifies as prior art that can be relied on to invalidate a patent.

This LIVE Webcast will discuss the following key topics:

Expansion of the PTAB’s discretion to deny petitions
New claim amendment process in PTAB cases
The PTAB’s new Precedential Opinion Panel, including a focused discussion of the panel’s decision about what evidence is needed to prove that a publication qualifies as prior art
The Federal Circuit’s Arthrex decision
Potential implications of these developments

Agenda:

SEGMENT 1:
Brian Murphy, Partner
Haug Partners

Director Iancu’s Policy Initiatives at PTAB
- Expansion of Discretionary Denial Power
- New Claim Amendment Process
- New Precedential Opinion Panel (brief discussion of Proppant, Hulu, Hunting Titan)
[UN?] CONSTITUTIONAL APPOINTMENT OF PTAB JUDGES
- Discussion of Arthrex v. Smith & Nephew case

SEGMENT 2:
Ted M. Cannon, Partner
Knobbe Martens

Summary of Hulu
- “At the institution state, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.”
- POP rejected more pro-petitioner position that a reference should be presumed to be a printed publication at the institution stage.
- POP also rejected more pro-patent owner position that the petition should be required to include all of the evidence needed to prove a reference is prior art by a preponderance of the evidence.
Petitioner Strategy
- If possible, use prior art whose prior art status cannot be challenged (102(b) patents and patent publications) or is hard to challenge (well-known and respected industry publications)
- Start early to gather evidence of prior art status
- Don’t assume you can rely on post-institution supplemental information
Patent Owner Strategy
- Carefully consider whether you have a viable challenge to prior art status
- Raise viable challenges to prior art status in the POPR – Board may allow petitioner to supplement if IPR is instituted
- Don’t rely solely on challenge to prior art status – Board more likely to exercise discretion to deny if challenge to prior art status is combined with strong merits and procedural arguments

Who Should Attend:

Patent Law Attorneys and Consultants
Intellectual Property Attorneys
Patent Agents

Brian Murphy Partner Haug Partners

Brian Murphy served as a Lead Administrative Patent Judge at the Patent Trial and Appeal Board from 2014–2017, where he …

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Ted M. Cannon Partner Knobbe Martens

Ted M. Cannon has litigated intellectual property disputes in district courts, appellate courts, and the United States Patent and Trademark …

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Course Level:
Intermediate

Advance Preparation:
Print and review course materials

Method of Presentation:
On-demand Webcast

Prerequisite:
General knowledge of patent laws

Course Code:
148406

NY Category of CLE Credit:
Areas of Professional Practice

Total Credit:
1.0 CLE

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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.

Website: https://www.haugpartners.com/

About Knobbe Martens

Consistently ranked among the top intellectual property firms in the nation and worldwide, Knobbe Martens dedicates its practice to all aspects of intellectual property and technology law, including patents, trademarks, copyrights and trade secrets. Knobbe Martens handles intellectual property litigation nationwide, including litigation at the district courts, the appellate courts, the Patent Trial and Appeal Board and the International Trade Commission. Knobbe Martens has close to 275 attorneys and scientists, including over 125 attorneys dedicated to intellectual property litigation. The firm has offices in Orange County, California, Los Angeles, New York, San Diego, San Francisco, Seattle and Washington, D.C., and enjoys an international reputation for excellence. More information about the firm can be found at www.knobbe.com.

Website: https://www.knobbe.com/