WilmerHale was one of the hosts for the GW Law Conference: Post-Grant Practice Roundtable Discussion. This informative roundtable with patent field leaders from academia, industry and government discussed the post-grant practice at the Patent Trial and Appeal Board (PTAB) and how post-grant proceedings have changed the practice of patent law.
Speakers included:
- Greg Dolin, University of Baltimore
- David Kelley, Ford Motor Company
- Bernie Knight, McDermott Will & Emery
- Molly Kocialski, Oracle
- Jeff Kushan, Sidley Austin
- Kevin Laurence, Renaissance IP Law Group
- Lead Judge Susan Mitchell, USPTO/PTAB
- Naveen Modi, Paul Hastings
- Lissi Mojica, Dentons
- Terry Rea, Crowell Moring
- Hans Sauer, Georgetown University
- Howard Sherman, eBay
- Jonathan Stroud, Unified Patents
- Don Coulman
- Scott Weidenfeller, USPTO/Solicitor's Office
- Chad Hanson, Medtronic
- Moderator: John Whealan, GW Law
- Moderator: Dave Cavanaugh, WilmerHale
This half-day program explored current issues with US post-grant review from two perspectives: first, the post-grant practice at the PTAB and second, how the development of post-grant procedures has affected patent enforcement and defensive strategies in district courts.
The program highlighted particular aspects of the practice that are working well, and featured a thoughtful discussion of suggested improvements in certain areas of the process.
Selected topics included:
- PTAB: The post-grant practice before the PTAB
- Three year review: A review of the process after three years
- Petitions / Responses: Developing a compelling petition; considerations for preparing a strategic patent owner’s response
- Non-review of institution decisions: The current lack of appellate review of decisions on institution and their effect on the process
- Terminating proceedings: Settlements, alternative dispute resolutions, and withdrawals
- Proposed rule changes: Will they will assist in an efficient and just proceeding to determine validity
- One-year deadline versus due process for the patent holder: Is the balance correct
- DCT Litigation; Legislation; and the Patent Process: The effect of the post-grant practice on patent disputes
- Stays of district court litigation
- Concurrent proceedings: District court / PTAB
- Pharmaceutical patents and Hatch-Waxman: How they have been effected
- The Federal Circuit: Review of recent PTAB decisions
- Legislation: Legislative proposals, this congressional term and beyond
- Conclusion: Is the system working; Possible ways to improve on it
