Discretionary Denials of IPR Petitions by the PTAB: Recent Developments, Trends, and Effective Strategies

Events Discretionary Denials of IPR Petitions by the PTAB: Recent Developments, Trends, and Effective Strategies Eric C. Cohen September 29, 2021

LIVE: Monday, September 20, 9:30-10:30am CT
VIRTUAL: Wednesday, September 29, 11:00am-12:00pm ET

Rimon’s Special Counsel Eric Cohen will moderate the panel discussion, “Discretionary Denials of IPR Petitions by the PTAB: Recent Developments, Trends, and Effective Strategies”, at the 2021 Intellectual Property Owners Association Annual Meeting on September 20, 2021.

Program Description

This session will explore what have proven thus far to be effective strategies by patent owners and petitioners, including the choice of forum for the district court action by patent owners, and successful strategies that have been used by petitioners to avoid discretionary denials. Many stakeholders have criticized discretionary denials under the NHK/Fintiv criteria as too dependent on the district court in which the parallel case was filed. A substantial majority of IPR petitions in which the PTAB has denied institution based on those criteria have been related to cases pending in the Eastern District or Western District of Texas, where judges have set aggressive case management schedules with early trial dates. In comparison, very few PTAB discretionary denials relate to cases filed in the District of Delaware or the District of New Jersey. This panel will explore the substantive arguments made by the parties in the Apple v. Iancu case, as well as any decision and/or the issues on appeal of any such decision. The panel will also debate whether the NHK/Fintiv criteria are fair and equitable and whether they meet the goals of the AIA to have efficient and predictable determinations of whether patents are invalid. The panel will also discuss alternative criteria that might be considered by the USPTO.

Mr. Cohen will be joined by:

Ronald Cahill, Barnes & Thornburg LLP
Erin Dunston, Panitch Schwarze Belisario & Nadel LLP
Eldora Ellison, Sterne, Kessler, Goldstein & Fox, PLLC
Henry Hadad, Bristol-Myers Squibb Company
James Smith, Ecolab Inc.

If you are interested, you may register for the in-person meeting September 19-21, or for the virtual meeting, September 28-30 at IPO.org.

Eric Cohen handles disputes involving intellectual property matters in federal trial courts, federal courts of appeal, and the U.S. International Trade Commission. Eric has represented plaintiffs and defendants in patent infringement litigation, trade secret litigation, copyright litigation, and trademark litigation.  He has handled contested proceedings in the U.S. Patent & Trademark Office, including inter partes review and covered business method review proceedings before the Patent Trial & Appeal Board, as well as ex parte reexaminations, and trademark oppositions.  He has also prepared and prosecuted patent applications. Read more here.

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