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Monday May 05, 2014

Message from Scott Boalick, Acting Vice Chief Judge: PTAB AIA Trial Roundtables Are in Full Swing and There is Still Time to Attend One in a City Near You

The PTAB AIA Trial Roundtables are going strong with six down and two to go. The Board started the roundtables in mid-April at the USPTO headquarters in Alexandria and since has visited New York City, Chicago, Detroit, Silicon Valley, and Seattle. This week, the Board winds down with the last two roundtables in Dallas on May 6 and Denver on May 8.

The Board is conducting the roundtables for two purposes. First, the Board aims to educate stakeholders about the AIA trials. The Board has reviewed all trial filings made in the 18 months since the proceedings started and has many helpful lessons learned to share. For example, during each roundtable event, the Board conducts a mock conference call focused on motions for a claim amendment and for additional discovery to showcase how to succeed on these types of motions.

Second, the Board is eager to collect your feedback about the AIA trials. In particular, the Board is interested in your suggestions for how to improve the trial proceedings to solidify them as a faster and less expensive alternative to district court litigation for challenging patent validity. Stakeholders in Alexandria, New York City, Chicago, Detroit, Silicon Valley, and Seattle offered many thoughtful comments, and consistent themes are emerging on areas where changes may be necessary. The Board is compiling these suggestions and aims to carefully consider each one after the roundtables conclude.

The PTAB Roundtables likewise feature a panel discussion with top-notch AIA trial practitioners who have made many AIA trial filings. Panelists have included Peter Thurlow, Andrew Sommer, Erin Dunston, and Scott McKeown in Alexandria; Erika Arner, Rob Sterne, Vin McGreary, and Sharon Israel in New York City; Herb Hart, Kevin Noonan, Dorothy Whealan, and Tim Baumann in Chicago; Jon Beaupre, Brad Pedersen, Kara Stoll, and Karl Renner in Detroit; Kevin Greenleaf, Matt Smith, Dianna Devore, Michael Rosato, and Wayne Sobon in Silicon Valley; and John Vandenberg, Don Coulman, Brandon Stallman, and Rich Black in Seattle. These practitioners have shared their experiences and strategies for navigating the AIA trial waters. They also have fielded many probing questions about each stage of the trial process from petition filing to briefing to oral hearing tips to estoppel following the final written decision.

The PTAB is pleased to have received a strong stakeholder turn-out so far, and thanks the patent community for supporting the Roundtables. More than 600 stakeholders have joined in person, and more than 200 viewed the live webcast. If you want to learn and/or share feedback about the AIA trials or engage with the talented practitioner panelists, the PTAB encourages you to attend one of the two remaining roundtables in Dallas or Denver. The schedule with venue locations and directions is available on the PTAB Roundtable micro-site. Also, the last roundtable on May 8 will be webcast live from Denver; viewing instruction and access information can be found on the PTAB Roundtable micro-site.

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