Prevailing Before the PTAB “Death Squad”: Practical Considerations for Petitioners and Patent Holders (Live MBHB Webinar)

Whether you are a defendant facing a patent infringement lawsuit or are a patent owner that has just received an inter partes review (IPR) petition, there are important strategic considerations to address before the various milestones of a post-issuance review. In many cases, the change in venue from the district court to the Patent Trial and Appeal Board (PTAB) will require a significant departure from the tactics routinely employed in patent litigation. Given the PTAB’s strict adherence to its relatively restrictive administrative review rules, both petitioners and patent owners need to approach a post-issuance review with a mindset that differs – sometimes drastically – from the mindset of traditional patent litigation.

In addition, even though the claim cancellation rates have slowed since the early days when the PTAB was labeled a property right “death squad” by then-Chief Judge Rader, neither petitioner nor patent owner can take anything for granted. As a companion webinar to the recent MBHB Webinar “PTAB Invalidity Proceedings: Lessons Learned in the First Two Years” (archived on the MBHB website), we will explore some of the strategic decisions that both parties must make during the different stages of post-issuance reviews, focusing primarily on IPRs. 

Topics will include:

  • A discussion of strategic factors to consider when determining whether and when to file a petition for inter partes review;

  • An analysis of the potential responses by the patent holder, including factors to consider when deciding whether to file a Patent Owner’s Preliminary Response and strategies for amending claims;

  • A review of discovery practices before the PTAB and considerations for choosing when to press for additional discovery; and

  • A look at what impact that the Federal Circuit will have on PTAB proceedings.


Presenters: MBHB attorneys Andrew W. Williams, Ph.D. and John “Jay” M. Schafer

Access an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording.  

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.