Defining the prerogatives of the USPTO’s Patent Trial and Appeal Board under the America Invents Act is one of the great unfinished tasks in U.S. patent law.
The en banc Federal Circuit made an important contribution to that effort in January, ruling in Wi-Fi One LLC v. Broadcom Corp. that PTAB time-bar determinations under 35 U.S.C. § 315(b) are appealable because they do not fall within the scope of the judicial-review prohibition of § 314(d). This overruled an earlier panel decision in Achates v. Apple.
Our panel includes a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board who has helped develop devise the rules for proceedings under the AIA, a former PTAB Administrative Judge now in private practice, an IP Counsel with Ford Global Technologies LLC who oversees its PTAB docket, and litigator who practices both at the PTAB and before U.S. district courts.
Our panelists will discuss:
- The AIA’s various time bars as adjudicated by the PTAB – and whether there is a standing inconsistency among PTAB panels.
- On which other issues are litigants likely to press for appeals such as the naming of all interested parties, or the reach of estoppel.
- Real-party-in-interest and privacy, because in practice many potential appeals involve situations with various parties including joint defense groups, indemnification, and patent aggregators.
- How will the PTAB respond to increased demands for discovery?
- Hon. Michael Tierney, U.S. Patent & Trademark Office
- Matthew Berkowitz, Shearman & Sterling LLP
- Scott Kamholz, Covington & Burling LLP
- David Kelley, Ford Global Technologies LLC