A Year in Review: PTAB Practice Updates, the Impact of COVID, and Lessons Learned Along the Way (Live MBHB Webinar)

Tues., August 17, 2021 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx

Since its creation, parties have filed thousands of petitions to the Patent Trial and Appeal Board (“PTAB”). Today, these proceedings and the PTAB are a significant aspect of every major patent litigation, but the contours of these proceedings continue to change. On top of these changes, COVID has presented a particularly difficult landscape for most practice areas, including patent litigation, but PTAB practice has persevered. In light of the changes and challenges in the past year, four key topics should be at the forefront of every PTAB practitioner’s renewed focus this year:

First, COVID has affected almost every contour of the legal industry this year.  What lessons has the PTAB learned from COVID and what impacts will those lessons have on PTAB practice and AIA Trial Proceedings moving forward?  What lessons can the private sectors take from the USPTO/PTAB?

Second, discretionary denials of AIA Trial Proceedings (and denials to institute, in general) are at an all-time high at the PTAB. Commenters and courts, alike, are seeking guidance on how to navigate these denials, particularly in light of Fintiv. What can practitioners to successfully invoke or avoid these denials?

Third, despite the benefits of the PTAB’s new motion to amend pilot program, patent owners are still hesitant to file motions to amend and take advantage of the program. At the heart of this hesitation lies the continuing threat of “full-blown examination” by opting into this program.  What are the risks and rewards of opting into this pilot program?

Fourth, the decision in Arthrex v. Smith & Nephew will likely issue from the Supreme Court this Summer.  Will the Court hold that administrative patent judges (“APJs”) were (or were not) properly appointed to the PTAB?  What does this holding mean for patent practitioners now, as well as going forward?

MBHB partners James Lovsin and George “Trey” Lyons, III will take a look at these topics and more and the impact they have on AIA Trial Proceedings.

Presenter(s): MBHB attorney(s) James Lovsin and George “Trey” Lyons, III

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.

NOTE: MCLE credit is not available for this archived recording.


Access an archived audio version of this webinar here