Top Stories at the PTAB: What You Need to Know (Live MBHB Webinar)

Tues., March 13, 2018 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx 

The PTAB recently turned five and post-grant proceedings before the Board are as popular as ever. For example, in the past year, even the Supreme Court has taken an interest in how the Board conducts these administrative trials, including questioning whether they are even Constitutional in the first place. Moreover, the Federal Circuit sitting en banc has changed course on two important issues – claim amendments and the reviewability of institution decisions. These cases, as well as an uptick in the number of remands to the PTAB, have prompted the Board to issue guidance to address these concerns. Thus, it is imperative that all patent practitioners and those impacted by these decisions be aware of these changes, as well as stay up-to-date on the best practices before the PTAB.

Accordingly, MBHB attorneys Andrew Williams, Ph.D. and George “Trey” Lyons, III examine the Supreme Court’s Oil States Energy Services case and the impact it might have on future PTAB practice, as well as (provided the Court does not find the entire system unconstitutional), the following topics:

  • Estoppel, and the impact the Supreme Court might have on protecting patent owners in the future.

  • Has claim amendment practice changed since the Aqua Products, Inc. v. Matal decision (and should it be changing more)?

  • What issues related to institution decisions are now reviewable in the wake of Wi-Fi One?

  • How is the PTAB handling the growing number of remands from the Federal Circuit (and how could this impact your trial and appeal)?

  • What is the Board doing to address multiple petitions against the same patent (and should they be doing more)? 

Presenter(s): MBHB attorneys Andrew Williams, Ph.D. 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