Leadership

Directors and Officers

President 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.

President-Elect Monica Grewal (WilmerHale)

As the founding director of the PTAB Bar Association representing WilmerHale, and a current co-chair of the Post Grant Proceedings Group at WilmerHale, post grant work is a cornerstone of my practice. Since the inception of the America Invents Act, post grant proceedings have become a key part of IP/IP Litigation strategy—the interplay between these proceedings and concurrent litigation in different venues has created an engaging, complex area of law. Since taking the Patent Bar Exam in 1995 while working on the first launch of the Space Shuttle to our International Space Station Mir, I marvel at how our Patent Office practice has become more vital for our clients while our presence in space exploration diminished for a duration. The USPTO practice provided a much needed platform as I transitioned to becoming a patent attorney from my engineering days. I sincerely enjoy being part of the PTAB Bar Association and providing a platform for discourse, collaboration and engagement within this community from the inception of our Association. Our Association has recently worked on providing Probono opportunities for our practitioners in collaboration with our PTAB Judges which speaks further to our sense and sensibilities as an Association and personally gratifying.

Vice President Li-Hsien (Lily) Rin-Laures (RinLaures LLC)

The PTAB is an important venue for patent challenges and appeals which shape the landscape for both patent litigation and prosecution. Good IP strategy must constantly consider the possibility of initiating or defending against PTAB challenges and the potential impact on prosecution, opinions, licensing and litigation. My past experience with other inter partes proceedings such as interferences and oppositions provides perspective on evolving PTAB practice as it is shaped by a growing body of Federal Circuit and Supreme Court precedent, agency decisions, rules and guidelines. It is 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.

Treasurer Jon E. Wright (Sterne, Kessler, Goldstein & Fox PLLC)

Since its founding in 2016, the PTAB Bar Association has sought to promote and preserve the highest professional and ethical standards among lawyers and stakeholders who appear before the PTAB. And under its governing Charter, the Association is dedicated to helping secure the just, speedy, and inexpensive resolution of every PTAB proceeding. Those are worthy goals that I care deeply about as a practitioner who has represented clients in this important patent venue since its inception. It’s been fascinating to watch the PTAB evolve over past decade. But what has not changed is the Association’s commitment to fostering constructive dialogue between the bar community and the PTAB, and to helping junior practitioners thrive through education, collaboration, and advocacy under programs like our annual Bootcamp, and through the PTAB’s Legal Experience and Advancement Program (LEAP). For these reasons, I am honored to continue my service to the Association as Treasurer, and to represent Sterne Kessler Goldstein & Fox as one of the founding Association members.

Secretary Megan F. Raymond (Groombridge, Wu, Baughman & Stone LLP)

When it comes to the PTAB, remember your audience and the nature of PTAB practice. First, the PTAB judges are substantively knowledgeable and have little-to-no help in the form of law clerks. Assume that they will catch technical shortcomings, but understand that breaking down the analysis piece by piece so that it is readily understood makes for good advocacy. Second, as PTAB practitioners, we appear before the same judges and across from the same counsel repeatedly. With respect to the judges, credibility is key. With respect to counsel, be reasonable and play nicely. You may find yourself on the other side of the same ask with the same counsel in the future. As a member of the PTAB Bar Association board, I look forward to supporting and building collegiality amongst members of the PTAB Bar, and have a particular interest in building participation by women in PTAB proceedings.

Non-Officer Board Members

Michael Babbitt (Willkie Farr & Gallagher LLP)

The PTAB Bar Association is the premier organization for thought leaders of the PTAB. We have done exciting work to help shape PTAB policy with the PTAB leadership, judges, practitioners, clients, and stakeholders. I have been involved for years in the PTAB Bar Association leadership, and I believe our annual conferences, comments on proposed rulemaking, amicus briefs, meetings, and publications have an important role in the PTAB community. My practice focuses on complex patent litigation, PTAB proceedings, and disputes involving electrical and mechanical technologies, and I hope to add to the diversity of thought on the PTAB Bar Association Board of Directors in the upcoming years.

A ndrew Baluch (Smith Baluch LLP)

Having seen firsthand the America Invents Act as it was being negotiated and enacted while I served as a special advisor in the USPTO and White House IPEC, it is gratifying to see today the popularity and success of inter partes reviews (IPRs), especially as compared to the now-expired inter partes reexamination procedures that IPRs replaced. Of course, no legislative and regulatory effort of the AIA’s size can ever be perfect, or achieve exactly the right balance, immediately upon enactment. That is why it is encouraging to see continuous refinements being made to IPR procedures, with input from the Association, via notice-and-comment rulemaking, amicus briefing, congressional oversight, and possible legislative reforms. The goal is, and should continue to be, striking the delicate balance, as the Supreme Court put it, between protecting patentable inventions on the one hand, and protecting the public’s ability, on the other, to pursue innovations, creations, and new ideas beyond the inventor’s exclusive rights.

Joshua Goldberg (Finnegan, Henderson, Farabow, Garrett & Dunner LLP)

PTAB practice has come a long way since the PTAB was created by the AIA. And so has the PTAB Bar Association. We have become the premier organization for dialogue between the bar community, the PTAB, and other stakeholders. I focus my practice almost exclusively on PTAB proceedings, and like many others, I enjoy the Association‘s programming and the opportunities it has provided me to meet, get to know, and work with others in the bar. I‘m proud to have been involved with the Association since the beginning and look forward to helping shape its future.

Eugene Goryunov (Haynes and Boone LLP)

The advent of AIA post grant proceedings—IPR and PGR—changed the IP litigation landscape dramatically. Almost instantly, these proceedings and PTAB practice generally became a part of every IP trial attorney’s playbook. The formation of the PTAB Bar Association was the natural next step because it works to create relationships between practitioners, encourage though leadership, and, as a result, foster a sense of comradery and decorum before the PTAB.

Deborah Herzfeld (McNeill Baur PLLC)

Patent procurement can be viewed as a negotiation between Applicant and the USPTO. When the negotiations reach a stalemate, PTAB plays an important role in the form of ex parte appeals. In fact, the majority of PTAB workload is dedicated to such ex parte appeals. The ultimate goal for my clients is not just to obtain a patent, but to obtain a patent with longevity, able to withstand post grant PTAB proceedings and beyond. The PTAB Bar Association provides invaluable access and input from a diverse group of practitioners and PTAB leadership which assists in securing successful patent procurements.

Scott Jarratt (Haynes and Boone LLP)

Practicing before the PTAB presents unique challenges and opportunities for attorneys who are passionate about both law and technology. Because the PTAB is still in its infancy (relatively speaking), the body of law guiding our practice is still forming and ever-shifting. The only constant is change! Each case presents an opportunity for a PTAB practitioner to dig into unexplored corners of patent and administrative law and break new ground. As someone who enjoys finding technological reasons why my opponent is legally wrong (and vice versa), I thoroughly enjoy representing clients before the PTAB. The PTAB Bar Association brings together practitioners like myself, but also stakeholders, judges, USPTO leadership, and policy makers. The Association creates an invaluable community that promotes the collaboration necessary to drive the PTAB practice forward in a positive way. I am honored to contribute to this mission as a member of the Board of Directors.

Lisa Nguyen (Allen & Overy LLP)

PTAB practice strips a patentability dispute to its core—to the rules, record, and roadmap. Proceedings require practitioners to have a nuanced understanding of the rules, a detailed knowledge of the record, and a compelling roadmap that navigates the Board through your arguments. The PTAB Bar Association has been an invaluable tool in mastering these issues, by providing a forum for practitioners, the industry, the PTAB, and other stakeholders to have constructive discussions on best practices, improving PTAB proceedings, and advancing innovation generally. I am proud to be an inaugural member of the Association and humbled to continue to build on what the Association has accomplished.

Jennifer O'Connell (Stanek, Lemon, Crouse & Meeks PA)

Ex parte appeals are an under-utilized tool in patent prosecution. The opportunity to have your application considered by three administrative patent judges, skilled in both the law and technology, should not be overlooked. Applicants can obtain claims they are entitled to with weak or improper rejections often being reversed. When an Examiner is affirmed, the PTAB Decisions may provide valuable feedback and guidance regarding the cited art and pending claims that aids in further prosecution. The PTAB Bar Association provides a collaborative environment for patent practitioners to discuss the nuances of ex parte appeals and practice before the PTAB. In addition, my membership in the PTAB Bar Association has been essential in keeping current with the ongoing changes occurring in post-grant practice.

Heather Petruzzi (WilmerHale LLP)

The PTAB Bar Association provides members with meaningful educational opportunities and resources, serving as a forum for discussing the unique issues and challenges facing us as practitioners. Through our collaboration with the PTO, we help our members stay informed of and connected to developments in our corner of the legal community. As an IP attorney with diverse experience representing life sciences and medical device clients before the Board both as petitioners and patent owners, I am excited and honored to contribute to the organization as a Director.

Thomas Rozylowicz (Fish & Richardson PC)

One of the keys to the success of the PTAB Bar Association has been the manner in which it embraces a collaborative and collegial spirit. It is an environment where diverse perspectives converge in creating a platform to committed to excellence. By participating in the PTAB Bar Association, you gain unparalleled opportunities to engage with the latest developments, learn from luminaries in the field, and actively contribute to shaping the trajectory of PTAB proceedings.

Deborah Yellin (Crowell & Moring LLP)

PTAB practice provides the best of both worlds between patent prosecution and litigation. Every PTAB judge has a technical background. Attorneys arguing before the board must have a thorough understanding of the technology involved in a patent as well as strong grasp of the case record. I began my career in patent prosecution and counseling, including ex parte appeals. Following the passage of the America Invents Act, I branched out into PTAB trials. I found this transition to be exhilarating, intellectually stimulating and fulfilling, and helped me provide further value to my prosecution clients. I highly encourage patent prosecutors to join the PTAB Bar Association, not only to enhance their prosecution and ex parte appeal practice, but to consider including PTAB trials in their practice as well.

Daniel Zeilberger (Paul Hastings LLP)

Practice before the Patent Trial and Appeal Board is unique in many ways. For one, the scope of the work can be broad, covering everything from appeals of examiner rejections in patent applications that may cover important innovations; to derivation proceedings where disputes about invention are resolved; to inter partes review and post grant review proceedings where patentability issues are considered. For another, the work can involve many unique and cutting-edge aspects of the law, including not just patent law—of which there are bountiful issues—but also various other issues touching on, for example, important aspects of administrative and constitutional law. And for yet another, the stakeholders are varied and can have many different interests and perspectives. The PTAB Bar Association thus serves an important role in helping to address, and foster conversations about, the many PTAB-related issues that arise every year. It is an honor to serve as a Director and help work towards the Association‘s goals.

Past Presidents

Immediate Past President David Higer (Winstead PC)

The PTAB is an indispensable part of the U.S. patent system. The PTAB Bar Association was formed with the goals of being the collaborative, congenial, inclusive, highly professional and community-centric Association dedicated to being a voice for all PTAB stakeholders. The Association’s leadership has always kept these goals at the heart of all their decisions. I’m proud to practice before the PTAB and to be associated with such a great group of world class patent practitioners, leaders and, most importantly, people.

Past President W. Karl Renner (Fish & Richardson PC)

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!

Past President J. Steven Baughman (Groombridge, Wu, Baughman & Stone 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.

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.

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!

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.