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.

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Practice:

  • Technology & Innovation Sector
  • Intellectual Property

Jason Lang Partner Intellectual Property

Silicon Valley

Jason Lang is a member of the Patent Litigation practice. Mr. Lang’s practice includes both litigation and counseling in a wide spectrum of technologies, including semiconductor devices, communication technologies, and software applications. With respect to semiconductor devices, Mr. Lang has been working on circuit, fabrication, and memory matters consistently for the last 15 years, including for clients such as Micron, Intel, Hitachi and Maxim.

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.

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Practice:

  • Technology & Innovation Sector
  • Patents
  • 3D Printing
  • Intellectual Property
  • U.S. International Trade Commission
  • Inter Partes Review (IPR)
  • Automotive Technology & Mobility

T. Vann Pearce, Jr. Chief Practice Officer, IP & Litigation and IP Counsel Patents, 3D Printing

Washington, D.C.

Vann Pearce serves as the Chief Practice Officer for the IP & Litigation Business Units and is a member of the Intellectual Property Group.

As Chief Practice Officer, Vann advises on strategic planning, operations, and management of Orrick’s IP, Employment, Complex Litigation & Dispute Resolution, International Arbitration, and Supreme Court & Appellate practice groups, which comprise more than 300 attorneys globally. His responsibilities include oversight of the units' financial performance, business planning and execution, and lawyer recruiting.

As a lawyer in the firm’s IP group, Vann’s practice focuses on patent litigation and related disputes. He has served as lead counsel in over 20 disputes, including matters with tens to hundreds of millions of dollars at stake, for clients including publicly traded U.S., Japanese, and European companies. He also counsels clients on patent licensing and portfolio development, particularly for companies developing 3D printing-related technologies. Vann co-founded Orrick's 3D printing practice.

Vann previously served as the firm’s U.S. Law School Hiring Partner, overseeing entry-level hiring nationwide.