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

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Practice:

  • 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:

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

T. Vann Pearce, Jr. Partner Patents, 3D Printing

Washington, D.C.

Vann wins difficult intellectual property disputes, and helps clients use their intellectual property to build their companies.

As a litigator of patent infringement and related matters, he has obtained judgments, dismissals, and favorable outcomes in federal district courts, the Federal Circuit, the ITC, and in inter partes review proceedings. As a counselor on patent licensing and portfolio development, Vann crafts precise strategies which minimize legal threats and capitalize on emerging industry trends. Whether resolving today’s disputes or helping his clients plan for the future, Vann understands how to lead teams to successful outcomes, on budget, and in demanding circumstances.

Like his clients, Vann approaches his work with an entrepreneur’s mindset. Vann co-founded and is Co-Chair of Orrick's 3D Printing practice. Vann frequently speaks at conferences and universities around the world about the intersection of 3D printing/additive manufacturing and intellectual property law.

Vann draws upon his technical background to quickly understand complex inventions ranging from semiconductors, to imaging and displays, to chemistry. He holds a chemical engineering degree and worked in the medical device and biotech fields before law school.