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The Latest PTAB Developments: New Challenges for Institution and New Risks for Patent Litigation

Berkeley Center for Law & Technology

Sponsored Event | October.27.2020 | 9:30am - 10:30am (Pacific Daylight Time)

Webinar

Orrick and the Berkeley Center for Law & Technology will be co-hosting a webinar and taking an in-depth look at the latest developments at the Patent Trial and Appeal Board.

The institution rate for IPR petitions has been significantly declining. One reason for the lower institution rate is that the Board is more frequently exercising its discretion to deny institution under 35 U.S.C. §§ 314(a) and 325(d).  In addition, now that it has been over two years since issuance of the SAS Supreme Court decision that requires institution of all, or none, of the IPR grounds, we are seeing how SAS increases the risk of filing IPRs. Even after institution, changes in PTAB practice have added more briefing, resulted in more objections and motions, and increased cost and uncertainty.

Join us as we discuss recent developments in discretionary denials, the effect of SAS on the percentage of claims that are found patentable, changes to post-institution practice and procedure, and strategies to employ in view of these new developments.

For more information, please contact Annie Schmaeling or Meredith Coyne.

CLE Credits Available: Y

Practice:

  • Technology & Innovation Sector
  • Geistiges Eigentum

Jason Lang Partner

Silicon Valley

Mr. Lang has litigated cases before district courts, state courts, and the International Trade Commission. He has an extensive practice in patent office proceedings, including ex parte reexaminations and inter partes reviews. He has been a top-filer in inter partes reviews. Recent matters include work with memories (DRAM, Flash and hard drives), semiconductor tools, semiconductor packaging, and design software.

His counseling work includes developing defensive and offensive intellectual property strategies in view of potential competitor litigation. He also assists clients in indemnity disputes, product launches, patent acquisition, licensing and portfolio management.

Before focusing on intellectual property litigation and counseling, Mr. Lang spent a year working for the District Attorney’s Office in Atlanta, Georgia, where he had considerable exposure to numerous trials.

Mr. Lang’s public service commitments include steady work for housing clinics. Mr. Lang recently first-chaired a four-day trial, led a successful mediation, and obtained a favorable settlement for clients of different local clinics.

Practice:

  • Technology & Innovation Sector
  • Patents
  • 3D Printing
  • Geistiges Eigentum
  • U.S. International Trade Commission
  • Inter Partes Review (IPR)

T. Vann Pearce, Jr. Partner

Washington, D.C.

Vann litigates in forums throughout the country. He has won several inter partes review proceedings before the Patent Trial and Appeal Board. He has secured favorable jury verdicts in Federal and state courts in Delaware, Florida, Maryland, and Texas. Multiple wins on behalf of his clients at the U.S. International Trade Commission in Section 337 investigations have earned recognition with “Disputes Deal of the Year” awards. And he has crafted winning strategies and briefs in precedent-setting Federal Circuit appeals.  

A chemical engineer by training, Vann is a member of the Patent Bar. His representations involve a broad range of technology fields, including semiconductors, artificial intelligence, consumer electronics, 3D printing, automotive technologies, digital imaging, cryptocurrency, and batteries. His clients are based worldwide, including a significant portion from Japan and China. Vann frequently travels to Asia to speak on key developments in intellectual property law.

Patent infringement litigation is central to Vann’s practice, but he also has handled breach of contract, trade secret misappropriation, antitrust, tortious interference, false advertising, civil theft, and bankruptcy matters. Many of his matters involve a complex mix of claims and counterclaims across legal disciplines, where he employs his strategic judgment to navigate competing risks.

While his practice focuses on litigation and dispute resolution, Vann also advices clients on patent licensing, portfolio development, and intellectual property due diligence. Vann co-founded Orrick’s cross-practice 3D printing initiative.

Vann has served the Firm in key leadership roles. In 2022-2023, Vann served as the Chief Practice Officer for the firm's IP & Litigation Business Units, which comprise nearly 400 attorneys globally. His responsibilities included oversight of the units' financial performance, business planning and execution, and lawyer recruiting. Vann also previously served as the firm’s U.S. Law School Hiring Partner, overseeing entry-level hiring nationwide.