PTAB Trials

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The America Invents Act (AIA) created several proceedings for challenging patent validity at the U.S. Patent and Trademark Office. These proceedings, which are held before the Patent Trial and Appeal Board (PTAB), include inter partes review (IPR), post‑grant review (PGR), and the transitional program for covered business method patents (CBM).

MBHB attorneys are uniquely qualified to handle proceedings before the PTAB. Indeed, not only do our attorneys have extensive litigation experience and comprehensive knowledge of the underlying technologies, but we also interact with the U.S. Patent and Trademark Office on a daily basis. Moreover, we have decades of experience handling cases before the PTAB and its predecessor, the Board of Patent Appeals and Interferences. With this specialized blend of skills, we know exactly what it takes to represent clients in all aspects of PTAB proceedings— from pre-institution strategy through oral hearing (and beyond).

Our attorneys are also dedicated to monitoring the latest developments at the PTAB, which puts us in the best possible position to educate and advise our clients on this quick-paced alternative to district court patent litigation. The News & Events and Publications tabs contain presentations and articles we have authored on topics relating to PTAB litigations.

Please join our PTABTrials group on LinkedIn for the latest information on IPRs, PGRs, CBMs and CAFC appeals relating to these PTAB trial proceedings.

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Upcoming Events

July 25, 2017
MBHB partner Emily Miao, Ph.D. is the Featured Presenter at this MATTER Sponsored Workshop
July 27, 2017
MBHB Partner Dr. Andrew Williams Is the Featured Presenter
August 29, 2017
September 14, 2017
MBHB Partner Anthoula Pomrening Is the Featured Speaker for this Program
September 19, 2017
MBHB Partners Alison Baldwin and Paula Fritsch, Ph.D. Are Featured Presenters
October 15-17, 2017
MBHB Partner Bradley Hulbert Is a Featured Co-Speaker for this PRG-Sponsored Program

Past Event

June 20, 2017
MBHB Partner Dr. Kevin Noonan Is the Featured Moderator at this BIO 2017 Program
June 19, 2017
MBHB attorney Aaron Gin, Ph.D. is the Featured Presenter at this MATTER Sponsored Workshop
May 24, 2017
MBHB Partner Kevin Noonan, Ph.D. Is the Featured Speaker
May 17-18, 2017
MBHB Partner Bradley Hulbert Is a Featured Presenter
May 16, 2017

Publications

June 19, 2017 (snippets Alert)

This morning, in Matal v. Tam, previously Lee v. Tam, the Supreme Court handed down its most impactful interpretation of the disparagement clause of the Lanham Act to date by holding that at its intersection with the First Amendment, the disparagement clause violates the First Amendment’s Free Speech Clause.  

June 12, 2017 (snippets Alert)
Today, in Oil States Energy Services v. Greene’s Energy Grp., LLC, Case No. 16-712, the Supreme Court accepted certiorari on the question of whether the IPR regime set out by Congress in the AIA is constitutional. At issue is whether, once patents are issued, the resulting patent rights are a “public right,” in which case their validity can be resolved by an agency, or a “private property right,” in which case the validity issues must be addressed by Article III courts and arguably subject to the Seventh Amendment’s right to trial by jury.
Spring 2017 (snippets)
Data analytics services now provide patent practitioners the ability to easily determine tendencies of patent examiners, which allows them to amend their prosecution strategies accordingly. This article focuses on the information provided by such services, and provides three particular scenarios where examiner-specific analytics can be used to update prosecution strategy.
Spring 2017 (snippets)
In part because of RCE and Appeal backlogs, the USPTO has introduced several post-examination programs to speed-up patent prosecution, increase collaboration between examiners and applicants, and reduce the number of RCE and Appeal filings. In this paper, we discuss several procedural options available to applicants after receiving a final rejection, advantages/disadvantages of each option, and conclude with suggestions on how to select the best option depending on the situation.
Spring 2017 (snippets)
Counterfeiting is not a problem limited to items such as luxury handbags or designer sunglasses, but one that extends to many industries—from pharmaceuticals to automotive parts, consumer electronics to cosmetics, computers to personal care products. Thus, the problems imposed on society by counterfeiting are far-reaching, and, according to recent studies, only growing.
Spring 2017 (snippets)
What seems evident from Halo, and the cases that have applied it, is that simply proving willful infringement (even when shown by clear and convincing evidence) is not always going to be sufficient to ensure an award of enhanced damages. To support an award of enhanced damages, patentees will now have to establish that the infringer was more than an aggressive competitor that may have played a little too close to another’s patent rights.
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