Leadership
Directors and Officers
President J. Steven Baughman (Paul, Weiss, Rifkind, Wharton & Garrison LLP)
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.
President-Elect 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!
Vice President David Higer (Drinker Biddle & Reath 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 Pattons 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!
Treasurer Gene Lee (Perkins Coie)
PTAB work is an interesting and dynamic part of patent practice. PTAB trials are critically important to petitioners and patent owners, with implications for patent litigation, prosecution, and transactions. The PTAB Bar Association is the premier professional organization related to PTAB work. As a Director, I hope to play an active role in helping the Association shape PTAB practice in the future as it continues to evolve.
Secretary 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 litigators 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.
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 litigators 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.
Past 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.
Alison Baldwin (Faegre Drinker Biddle & Reath LLP)
The AIA post grant proceedings have been viewed by some as the savior and by others as the destroyer of the US patent system. These viewpoints are often based upon whether one frequently is involved in using the post grant proceedings to challenge patents or is repeatedly defending against post grant attacks, but both viewpoints are valid. The PTAB Bar Association provides an unparalleled opportunity for stakeholders of both viewpoints to come together and share their perspectives. Through sharing of ideas and information with our fellow Association members and with the PTAB, we have the ability to shape these proceedings so that they are a fair forum for both the petitioner and the patent owner now and into the future.
Andrew Baluch (Smith Baluch LLP)
Courtenay Brinckerhoff (Foley & Lardner)
While a lot of attention is paid to AIA patent trials, the bulk of my PTAB practice involves representing clients in ex parte appeals from examiner rejections. The 60-70% affirmance rate and authority of the administrative patent judges to enter new grounds of rejection can make appearing before the PTAB a challenging undertaking, but we all share the same goal of strengthening the U.S. patent system through the grant of valid patents. Advocates for applicants can do their part by creating a strong record for appeal, focusing on controlling issues, and presenting their arguments clearly and succinctly, and administrative patent judges can do their part by taking an unbiased, fresh look at the record. The PTAB Bar Association provides a unique opportunity to work with USPTO and PTAB leadership to further these goals from all perspectives.
David Cavanaugh (WilmerHale)
Mita Chatterjee (Hologic, Inc.)
At less than six years old, the PTAB is still a relatively young institution. In this short time, however, practice before the PTAB has surged as post-grant proceedings have become an important component of any patent litigation strategy. Given the large number of post-grant proceedings and appeals from the PTAB, every day brings new decisions and rulings that shed new light on how the PTAB is to apply and interpret both the substantive law and its procedural rules. In this dynamic landscape, the PTAB Bar Association continues to be an important venue for stakeholders to come together and shape this developing area of patent practice. I look forward to collaborating with our members to lead the conversation.
Herb Hart (McAndrews, Held & Malloy, Ltd.)
The creation of the Federal Circuit more than thirty years ago spawned a bar association dedicated to providing a forum for practitioners appearing before that tribunal the Federal Circuit Bar Association. Theres now a new bar association focused primarily on post grant trial practice at the Patent and Trademark Office, a natural consequence of the transformation of the Board of Patent Appeals and Interferences into the Patent Trial and Appeal Board. Here at the PTAB Bar Association, we are fortunate to have the collective opportunity to channel the energy and the ideas of our membership into shaping this growing area of intellectual property law and practice.
David W. OBrien (Haynes and Boone, LLP)
Megan F. Raymond (Paul, Weiss, Rifkind, Wharton & Garrison LLP)
Li-Hsien (Lily) Rin-Laures (RinLaures LLC)
In just a few short years, the PTAB has become an important venue for patent challenges. Over 9000 IPRs have been filed since its inception. Appeals from the USPTO, which formed only 16% of the Federal Circuits docket in FY2014, represent about 47% of the courts docket in the first half of FY2019. Nowadays, IP strategy must constantly consider the possibility of initiating or defending against PTAB challenges and the potential impact on prosecution, licensing and litigation. Even through the lens of my past experience with other inter partes proceedings such as interferences and oppositions, it requires vigilance to keep up with evolving PTAB practice as it is shaped by a growing body of Federal Circuit and Supreme Court precedent, agency decisions and guidelines. Its an exciting and fun time, and the PTAB Bar Association offers an incredible community of practitioners, in-house counsel, and judges to foster a dynamic dialogue that informs us all and helps shape the future.
Tom Rozylowicz (Fish & Richardson)
Jason Stach (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
Post-grant proceedings now affect nearly every aspect of patent practice. People often focus on their interplay with litigation, which is significant, but the broader effects pervade patent prosecution and portfolio management strategies, licensing negotiations, monetization strategies, and due diligence when acquiring or transferring patent rights, among others. Companies that value their patent rights are now being more selective in which technologies they protect and are investing more resources in each patent to ensure that it can withstand the PTABs scrutiny. From conducting more thorough prior art searches to presenting additional objective evidence of non-obviousness during prosecution, innovators must have the long game in mind from day one. It has been a pleasure to practice in this important and ever-evolving area of the law.
Jon Wright (Sterne Kessler)
Before law school, I spent seven years in the U.S. Navy Submarine Force. There, my first commanding officer often reminded us that organizations allow ordinary individuals to accomplish extraordinary things. He, of course, was talking about his crew a mishmash of ordinary people who, working together, were able to take a nuclear powered fast attack submarine to sea, which is an extraordinary feat. As stakeholders in the PTAB Bar Association, we each belong to our own organizations that allow us to accomplish far more than we could on our own we are counsel to corporations, attorneys in firms, APJs at the USPTO, and judges at the Federal Circuit.
I see this Association as a vital and vibrant organization for bringing together individuals from various stakeholder organizations so that we can meet, share ideas and concerns, learn, and grow without the barrier of being on the opposite side of the boardroom, the aisle, or the bench. In this collegial environment, we can ultimately improve not only ourselves, but also this vital piece of our innovation-driven economy in which we operate.
