PTAB Pendulum Swings The Other Way Webinar

November 16, 2022 10:00AM – 11:00AM (CST)

Register Online

This Fall marks the ten-year anniversary of the enactment of the Leahy-Smith America Invents Act, which created the Patent Trial and Appeal Board (“PTAB”).  AIA Trial Proceedings at the PTAB continue to be a significant aspect of every major patent litigation, but the contours of these proceedings continue to change.

Three key topics should be at the forefront of every PTAB practitioner’s renewed focus this year:

  1. Discretionary denials of proceedings (and denials to institute, in general) are down. What can practitioners do to navigate these issues?
    Director Vidal’s recent interim guidance on discretionary denials based on parallel litigation appears to represent the pendulum swinging away from non-merits denials based on the Finitiv factors, which favors petitioners.
  2. The robust application of IPR estoppel, favoring patent owners. How can practitioners revisit their filing strategies in light of this trend?
    The Federal Circuit has decided several cases this year that have applied the IPR estoppel statute in a straightforward way to estop invalidity or unpatentability arguments in district court or subsequent PTAB proceedings. The court’s 2022 decisions appear to represent the pendulum swinging toward robust application of IPR estoppel, which favors patent owners.
  3. The Director’s right to review  PTAB final written decisions. Are there any remaining constitutional arguments based on Arthrex?  What are the risks and rewards of opting into Director Review?  How will the Director Review procedure develop in the year ahead?
    The Supreme Court, over one year ago, held in Arthrex v. Smith & Nephew that the Director has a right to review PTAB final written decisions, and the Office’s Director Review procedure based on Arthrex is continuing to develop.MCLE Credit pending.