Recorded Webinar from June 30, 2021
Please join Fitch Even for a free webinar, “The Better Part of Valor? Discretionary Institution in PTAB Proceedings,” on June 30 at 9 a.m. PDT / 10 a.m. MDT / 11 a.m. CDT / 12 noon EDT.
Filing a meritorious petition does not guarantee the Patent Trial and Appeal Board (PTAB) will institute trial in inter partes review (IPR) or post-grant review (PGR) proceedings. Congress allowed that the PTAB “may not authorize” IPR proceedings unless they identify a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged. This leaves the PTAB with discretion over whether to institute if the relevant conditions are present. The PTAB has issued guidance and precedential decisions to help petitioners and patent owners evaluate whether the PTAB should apply its discretion to deny institution.
During this webinar, we will cover these topics and more:
- How the PTAB exercises its discretion to deny institution in the face of parallel district court proceedings, e.g., in the Western District of Texas “rocket docket”
- Whether prior reexamination, IPR, PGR, or even prosecution will cause the PTAB to exercise its discretion and deny institution
- Why the PTAB may or may not deny institution of multiple petitions challenging a single patent
Dave represents clients in district court and PTAB litigation, with deposition and courtroom experience in both venues. His diverse IP law practice also includes acquisition of patent rights in the electronic, software, and mechanical fields. Dave currently chairs the American Intellectual Property Law Association PTAB Trial Committee.
Karen counsels clients ranging from individual inventors to multinational corporations with patent prosecution, post-issuance proceedings, and patent portfolio development and management. She has notable experience collaborating with foreign counsel in prosecuting both foreign and domestic applications for global clients and has represented clients in inter partes review and oral arguments at the PTAB.
A recording of this webinar is available through June 29, 2022.