Directors and Officers
President – Bob Steinberg (Latham & Watkins LLP)
“Law School Doesn’t Teach How to Form A Bar Association, But with the Help and Collaboration of Over 45 Law Firms, We Figured It Out.”
After litigating patent cases in district court for more than 25 years, a profound shift in my practice started in 2014 as I began to litigate proceedings at the PTAB. After a number of trial hearings, I noticed a few ways the process might be improved and wondered if others in the legal community had similar concerns and experiences. To my surprise, I couldn’t find a directory of PTAB practitioners or any bar association dedicated to addressing issues related solely to the PTAB. Shouldn’t there be one?
On February 19th, 2016, a “kick-off” conference call occurred with a handful of PTAB practitioners to explore whether they felt similarly. They did. Our first action was the creation of an organizational charter to provide a unified voice for all stakeholders to participate in the formation of a PTAB bar association. More than 45 law firms (and several companies) quickly signed on, and in less than seven months we launched the PTAB Bar Association.
I have been humbled by the level of commitment and effort by so many of the legal community to fulfill our mission of launching this association and making this bar association a success. I am truly honored to be the Interim President of the association.
President-Elect – Erika Arner (Finnegan, Henderson, Farabow, Garrett & Dunner LLP)
PTAB trial practice is a bit like the Wild West. When Congress gave us this brand new law, we all became pioneers trying to figure out how it should work. Nearly every proceeding involves something that is not specifically addressed in the statute or rules, providing opportunities to be creative and collaborate with the Board─and sometimes even opposing counsel─to shape the practice. In one case, we proposed a new type of motion to the Board, and the panel promptly asked us to file a short memo explaining how this new procedure should work under the statutory provisions. More recently, the Federal Circuit and Supreme Court have taken an interest in the nuances of PTAB trial practice. In one particularly fun argument, Judges Newman and Prost spent nearly 20 minutes questioning us about how motions to amend really work, and now the en banc Court will be taking up that issue. So much more to explore!
Vice President – Naveen Modi (Paul Hastings LLP)
This may sound basic, but do not play games with your opponent and be courteous and reasonable (e.g., with requests for extension). As one example, I was involved in an IPR where the other side submitted an English-language declaration, but insisted that the deposition be conducted in a foreign language right before the deposition started. This was the first time the other side made us aware of this issue and asked us to use an interpreter they had on-site. When we indicated that we would need our own interpreter as provided for by the rules and needed time to secure one, they insisted that we use their interpreter. We ended up having a call with the PTAB during which the judges ordered that the deposition be rescheduled for another day with proper interpreters and made the other side pay for certain costs for having to reschedule the deposition.
Secretary – J. Steven Baughman (Paul, Weiss, Rifkind, Wharton & Garrison LLP)
Room — With a View
As important as it is to know your audience — at the Board, three technically-savvy judges with tough questions — it can also be critically important to know your stage. The PTAB’s hearing rooms, whether in Alexandria or a satellite location, vary widely, and this can lead to unpleasant surprises for the unwary. Perhaps the most obvious challenge is one of space: in a multi-petitioner dispute, for example, Alexandria courtrooms other than “A” are unlikely to have enough room for all of the attorneys, let alone a representative from each party. And even within the available space, revamped technology has shifted some prior layouts and logistics practitioners have come to count on (in “A,” for example, there is no longer a shelf waiting under the podium for your papers and binders, and a new projector interface makes computer placement tricky if you don’t have a long extension cable at the ready). So for your next trip to the PTAB, bear in mind that knowing your room, as well as your case, can help smooth out what might otherwise be an awkward visit.
Treasurer – David Higer (Kirkland & Ellis LLP)
Working with the dedicated and creative group of people who have come together to form the PTAB Bar Association has been a great example of General Patton’s sage advice: “Never tell people how to do things. Tell them what to do and they will surprise you with their ingenuity.” I look forward to the continuing surprises sure to come as the Association strives to fulfill its goals of being collaborative, congenial, inclusive, highly professional and community-centric. To that end, my two pieces of advice are (1) strive for excellence in everything you do; and (2) if you’re not five minutes early, you’re late!
Sara Tonnies Horton (Jenner & Block LLP)
Litigation Landscape Has Changed
These days, it is unusual to litigate a case in District Court without at least discussing post-grant procedures with the client. And there’s a lot to discuss: stays, asserted claims, will-they-or-wont-they file a petition, bar dates, use of the same experts in court and before the PTAB, use of the same counsel, prospects of success in each venue, timing, estoppel provisions, cost, etc. etc. etc. One particularly useful tool can be to serve a file-ready copy of an IPR on your adversary pursuant to FRE 408 (with enough time for the adversary to analyze it before the bar date!). Sometimes it is possible to move communications along without actually filing a petition…
Teresa Stanek Rea (Crowell & Moring LLP)
The PTAB and Outreach
The America Invents Act may have taken at least seven years to come to fruition but it was worth the wait. The success of the AIA is best demonstrated by the popularity of the new trial proceedings before the PTAB. These new proceedings are now a mainstay of every litigator’s armamentarium. Their significance and value are appreciated by most practitioners in the United States but it is worthwhile to note that our international colleagues are immersed in the nuances of these proceedings as well. Many patent disputes can now be handled more efficiently, quickly and cost-effectively. We have the PTO to thank for getting everything up and running so quickly and for reaching out to our community as things progressed. The PTO remains flexible and continues to revise the rules as the need arises. That outreach is important and will be enhanced by the creation of our new bar association.
David L. McCombs (Haynes and Boone LLP)
PTAB Practice—What do we know now that we did not know a year ago?
We know a lot more about how cases will be handled once they get to the Federal Circuit. We’ve seen that most appeals will be affirmed by the court, often without a written opinion. A few recent cases have been remanded to the Board, so we’re learning how the post-appeal process will work. We also know that relying on the provisional filing date of a prior art patent is complicated and burdensome. The Federal Circuit’s decision in Dynamic Drinkware surprised many people with its requirement that a petitioner compare the claims of the prior art patent to its corresponding provisional application. Finally, we see that IPRs are noticeably changing the face of patent litigation. Patent enforcement campaigns seem to be more selective about their infringement allegations. IPRs are encouraging patent owners to give more consideration to a patent’s validity when choosing whether to bring suit and how to interpret the claims.
Eleanor M. Yost (Carlton Fields, P.A.)
Since the America Invents Act created the PTAB, practitioners have been scrambling to learn how to manage the new post-grant proceedings, and often, parallel patent litigation in a district court. It has been a steep learning curve for many, but important lessons have emerged. One of the most important is fight the instinct to “scorch the earth.” I love encouraging practitioners to make the hard choices—If a petition’s first 4 proposed grounds of invalidity are great, why muddy the waters by adding another 6? If there is no chance you will move to exclude an exhibit, why serve 19 objections to it? If a document isn’t referred to anywhere in the substantive papers or declarations, why is it in the record? The PTAB rules promote making thoughtful choices early and often, and practitioners shouldn’t be afraid to do so!
W. Karl Renner (Fish & Richardson P.C.)
Practice before the PTAB has provided many practitioners, including myself, an incredible outlet to bring value to our clients, and to have fun doing so. In fact, one of the best attributes of PTAB practice is the opportunity for patent prosecutors and litigators to work more closely together. While these two groups live homogenously within the walls of our firm, this practice allows us to come together across the industry. As for the PTAB Bar Association, I am honored to work shoulder-to-shoulder with colleagues around the nation and the globe to bring this off the ground, and I am excited by the prospects of what we can accomplish as we continue to work together to create a useful resource for industry and the PTAB!
Dinesh Melwani (Bookoff McAndrews PLLC)
Marc Richards (Brinks Gilson & Lione)
There is much to be learned from each other by all PTAB stakeholders coming together in a collegial community of engagement. The PTAB has been strict in not granting AIA petitions due to a petition’s reliance on conclusory statements of obviousness rather than full and complete explanations of how the prior art supports the alleged grounds for invalidity. Avoiding this pitfall is one of the main practice tips I have learned from APJ’s speaking at conferences and webinars. In parental fashion, the Federal Circuit Court of Appeals has pitched the same practice tip to the PTAB. In the case In re Warsaw Orthopedic, Inc., the Federal Circuit vacated and remanded the PTAB’s ruling of obviousness on one claim because of the “PTAB’s conclusory assertion that Figure 5 of Jacobson ‘appears to’ support its finding” did not provide the full reasoned explanation the Federal Circuit requires to uphold a ruling.
Monica Grewal (Wilmer Cutler Pickering Hale and Dorr LLP)
All eyes on the PTAB Bar Association
I was marveling at the recent discovery of a new species of a bright purple, googly-eyed stubby squid 3,000 feet deep on the rocky ocean floor off Southern California.
It got me thinking about the new species of patent practitioners who now practice before the PTAB. We may not all be bright purple and stubby, but have a more colorful practice that includes skillsets that I did not envision needing when I sat for the Patent Bar in 1995. The AIA post grant proceedings have made taking and defending depositions, meeting and conferring with opposing counsel and panels of Judges the norm. The papers we file are works of advocacy and have more color as compared to the responses to office actions, or patent applications we prepared.
The googly-eyed creature just discovered apparently looks like a cross between a squid and an octopus. The patent practitioner who appears before the PTAB, is a cross between a patent attorney and a litigator.
Q. Todd Dickinson (Polisinelli PC)
Remarkably, more than 11 years have passed since a steamy DC summer when disparate groups with varying interests in patent reform met in a downtown conference room and began the effort to reach consensus on a recently-drafted patent bill. What ensued was a long, often challenging, process leading to the most significant change in U.S. patent law and practice in a century: the 2011 enactment of the America Invents Act. A key component of that statute, the creation of new types of post-grant review processes before a newly-constituted board of administrative patent judges, has revolutionized patent practice, transformed the economics of law firms, and even altered the public’s perception of intellectual property itself. The creation of the PTAB Bar Association is a natural outgrowth of those developments. Bringing a talented bar together to share best practices, serve as stakeholder liaisons to the PTAB, and inform the development of a brand new jurisprudence, the PTAB Bar Association links great practice with great promise.
Scott A. McKeown (Oblon, McClelland, Maier & Neustadt LLP)
The District Court it Ain’t
One of the main attractions of an AIA trial proceeding is being before a true, expert agency. While many litigators have become accustomed to spinning grandiose themes and stories to persuade generalist judges/ jurors, at the PTAB it is all about the technology and claims. The judges know the technology better than you. Unless you enjoy an Administrative Patent Judge (APJ) staring holes through your soul, you would be wise to present technical points as opposed to storytelling.