How to Ensure a Smooth Sail at the PTAB: Best Practices for Petitioners & Patent Owners

Director Eldora L. Ellison, Ph.D. will speak on the panel “How to Ensure a Smooth Sail at the PTAB: Best Practices for Petitioners & Patent Owners” during the IP Institute virtual program, hosted by the California Lawyers Association IP Law Section. Her panel will occur on Tuesday, November 9, 2021 at 10:20 a.m. PST/1:20 p.m. EST. The program will cover up-to-date case law, practice guidance, and current views on state-of-the-art and developing areas in intellectual property.

Panel Overview

PTAB trial proceedings are a significant hurdle to patent enforcement and monetization. The preliminary stage of a trial is perhaps the most critical period for patent owners. And discretionary denials and changes to patent owner testimonial evidence have greatly impacted the strategy for effective preliminary responses. If the patent owner is unable to avoid institution, the trial concludes in a final written decision. Potential pitfalls face parties here too, and an effective trial strategy requires briefing matters of significance, not wasting money on distractions, and a comprehensive understanding of direct testimony, cross-examination, briefing and motion practices, and inter partes and ex parte amendment procedures. The panel will discuss these complex proceedings and their relationship to patent enforcement.