This webinar features the Chief Judge of the PTAB in conversation with two top litigators — one a leading practitioner at the PTAB and the other a preeminent advocate at the Federal Circuit and the Supreme Court — to discuss the path ahead after the recent host of major developments that will affect PTAB practice.
Topping the list of changes are those forced by the Supreme Court in its SAS decision this April. Changing some of the basic ground rules of AIA trials, SAS holds that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision.
Then, earlier this month the U.S. Patent and Trademark Office proposed a new rule that would change the claim construction standard used in America Invents Act (AIA) reviews. Under the proposal, the PTAB would no longer use the broadest reasonable interpretation standard to interpret the patent claims in an AIA review, replacing it with the standard used by federal courts and the U.S. International Trade Commission.
Many experts see both of these changes as making the PTAB an even more important venue for patentability challenges. But the Federal Circuit’s affirmance rate of PTAB decisions now hovers at around 70 percent, as it has increasingly demonstrated a willingness to send cases back to the Board. Our litigator panelists will give tips on how to build a successful appeal that results in remand or reversal, while the chief judge is expected to talk about the
impact of Federal Circuit decisions on PTAB practice. And panelists will discuss how to try to convince the PTAB to change its mind about invalidating a patent on remand, which occurs about 40 percent of the time.
- Hon. David Ruschke, U.S. Patent and Trademark Office
- Gregory Castanias, Jones Day
- Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP