GW Law Conference: Post-Grant Practice Roundtable Discussion

GW Law Conference: Post-Grant Practice Roundtable Discussion

Speaking Engagement

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  
This event was held under the Chatham House Rule, which states that: “When a meeting, or part thereof, is held under the Chatham House Rule, participants are free to use the information received, but neither the identity nor the affiliation of the speaker(s), nor that of any other participant, may be revealed.” For more information about this event, contact Mandy Murphy.

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