Directors and Officers
President David Higer (Wick Phillips)
President-Elect Teresa Stanek Rea (Crowell & Moring LLP)
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.
Vice President 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.
Treasurer Gene Lee (Perkins Coie)
Secretary Li-Hsien (Lily) Rin-Laures (RinLaures LLC)
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.
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)
Dave is the Chair of the Post Grant Proceedings Group at WilmerHale. He has been active in Post Grant proceedings at the US Patent Office and has filed petitions and represented patent owners in a variety of technologies and has been lead counsel or counsel of record on several hundred IPR proceedings. The Post Grant Proceeding procedures provided by the America Invents Act (AIA) provide an opportunity for the PTO to give a second look at a patent by a group of technically trained judges who understand the intersection of intellectual property law and technology. Dave has led Patent Owners to successful completion of IPR proceedings recognizing the importance of careful attention to the prior art and the challenged claims. He has also developed strategies for both Patent Owners and Petitioners for using IPRs as a vehicle toward settlement of related district court cases as well as developed strategies for joinder of parties. Along with IPRs, Dave routinely develops and implements strategies for other post-grant proceedings such as ex parte reexaminations, reissues and for ex parte Appeals.
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.
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)
David W. O'Brien (Haynes and Boone LLP)
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.
Jon E. Wright (Sterne, Kessler, Goldstein & Fox PLLC)
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.
Immediate President W. Karl Renner (Fish & Richardson PC)
Past President J. Steven Baughman (Groombridge, Wu, Baughman & Stone LLP)
Naveen Modi (Paul Hastings LLP)
Erika Arner (Finnegan, Henderson, Farabow, Garrett & Dunner LLP)
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.