The Patent Trial & Appeal Board (PTAB) continues to evolve at a rapid pace. The new leadership of Under Secretary Iancu has brought significant PTAB practice changes to date—with much more to follow in 2019. These changes include a newly proposed amendment Pilot Program, new strategies for adapting to the newly implemented Phillips claim construction standard, and a host of precedential decisions impacting changes to trial and institution practices. Additional modifications at the agency include new section 101/112 guidelines, and ever evolving trial practices. Together, these developments have led to a vastly different PTAB as compared to 2018.
In addition to the adjustments of the agency, recent decisions from the United States Court of Appeals for the Federal Circuit (CAFC) drive still further practice and strategy considerations for practitioners. Issues such as RPI/privity, collateral estoppel, and printed publications have been further refined by the Court. Given the recent changes, it is all the more critical that PTAB strategy be aligned with traditional infringement litigation practices.
As PTAB practice evolves, so does the patent monetization landscape. With further changes on the horizon for 2019, it is critical to develop new case management strategies, including concurrent patent prosecution and PTAB tactics, options, and PTAB exit strategies.
USPTO Post-Grant Patent Trials 2019 remains the most comprehensive and longest-running post-grant patent program for patent owners and investors; corporate counsel; patent litigators; patent advisers, owners, and analysts; and patent professionals.
WilmerHale Partner Donald Steinberg will speak on "PTAB Trial Route: The Article I Trial Court: Mechanics – Discovery, Briefing, Motion Practice and Amendment." An AIA Trial starts at institution and concludes in the final written decision (FWD) of the PTAB, this segment will cover everything in between. During such time the paper “trial” is conducted. The panelists will examine the unique PTAB forum, practices and pitfalls, direct testimony via declarations, cross-examination by deposition, briefing and motion practices, including the Amendment Pilot program.