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  • Secondary Considerations: Latest Guideposts (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar will review and analyze the latest judicial guideposts regarding the role and weight of objective indicia in evaluating the non-obviousness of a claimed invention. Uncertainty in this area dates back to Graham v. Deere, where the U.S. Supreme Court explicitly endorsed the use of secondary considerations but failed to clarify their role.

    This webinar will review and analyze the latest judicial guideposts regarding the role and weight of objective indicia in evaluating the non-obviousness of a claimed invention. Uncertainty in this area dates back to Graham v. Deere, where the U.S. Supreme Court explicitly endorsed the use of secondary considerations but failed to clarify their role.  

    Recently both the Federal Circuit and PTAB have clarified the nexus aspect of this issue. A patentee generally must establish a nexus between the objective indicia and the claimed invention. This is most easily done when the commercial product is coextensive with the claimed invention because the patentee is entitled to a presumption of a nexus between the associated objective indicia and the claimed invention. In Fox Factory, the Federal Circuit explained that whether a commercial embodiment is “coextensive” with a claimed invention is often a question of degree and that although “perfect correspondence” is not required, a patentee must show the product is “essentially the claimed invention.”  

    By contrast, the three PTAB cases, Lectrosonics, Inc. v. Zaxcom, Inc. (Jan. 2020; precedential April 2020), Ex parte Whirlpool Corp., (Oct. 2013; informative, April 2020) and Ex parte Thompson, (March 2014; informative April 2020), show the PTAB willing to find objective indicia arguments persuasive in AIA trials and appeals from prosecution rejections. The last two cases are rare examples of the PTAB making a case involving examiner rejection “informative”. The PTAB decisions lay out a roadmap of the kind of evidence needed to establish nexus.  

    Panelists will discuss the current landscape and share drafting and prosecution tips for strengthening the nexus case. 

  • Life Sciences Developments: Patentability at the EPO (RECORDING)

    Contains 7 Component(s), Includes Credits

    This webinar, which is the third in our recent European Practice Webinar Series, will address life sciences developments and, specifically, patentability at the EPO. Our panel, which is composed of experienced attorneys based in Europe, will discuss a wide array of issues

    This webinar, which is the third in our recent European Practice Webinar Series, will address life sciences developments and, specifically, patentability at the EPO. Our panel, which is composed of experienced attorneys based in Europe, will discuss a wide array of issues including:

    • New restrictions on the patentability of plants and animals made by “essentially biological processes”
    • Recent additions to the EPO’s Guidelines for Examination and how you might use them to advocate for your clients
    • EPO decision T 694/16 on novelty of personalized medicine claims
    • Article 83 of the EPC (sufficiency of disclosure) in Kymab/Regeneron
    • Article 87 of the EPC (priority)

    Manisha Desai, co-chair of IPO’s European Practice Committee, will moderate the webinar. Insights will be offered by Tim Hewson of the U.K.’s Chartered Institute of Patent Attorneys, along with fellow European Patent Attorneys Cyra Nargolwalla and Kathryn Eldridge.

  • Brexit and the Unified Patent Court (RECORDING)

    Contains 7 Component(s), Includes Credits

    IP practice in Europe involves many interesting issues, and none more so than the implications of Brexit and developments concerning the proposed Unified Patent Court (UPC). This webinar will bring together well-known IP practitioners from the U.K.’s Chartered Institute of Patent Attorneys and IPO’s European Practice Committee to discuss the latest updates relating to these topics and to provide insight on what the future of practice in Europe will look like.

    IP practice in Europe involves many interesting issues, and none more so than the  implications of Brexit and developments concerned the proposed Unified Patent Court (UPC). This webinar will bring together well-known IP practitioners from the U.K.’s Chartered Institute of Patent Attorneys and IPO’s European Practice Committee to discuss the latest updates relating to these topics and to provide insight on what the future of practice in Europe will look like. They will address issues including:

    • The Impact of Brexit on IP 
    • The UPC and the Unitary Patent Package
    • The Status of Ratification of the UPC 

    Speakers include Tony Rollins (former CIPA President) and Alicia Instone (CIPA Vice-President), as well as IPO European Practice Committee co-vice chair Aloys Hüttermann and committee member John Pegram. Dan Staudt, IPO President, will moderate the discussion. This webinar will present an excellent opportunity to learn more about IP practice in Europe. 

  • Brexit and the Unified Patent Court

    Contains 11 Component(s), Includes Credits

    IP practice in Europe involves many interesting issues, and none more so than the implications of Brexit and developments concerning the proposed Unified Patent Court (UPC). This webinar will bring together well-known IP practitioners from the U.K.’s Chartered Institute of Patent Attorneys and IPO’s European Practice Committee to discuss the latest updates relating to these topics and to provide insight on what the future of practice in Europe will look like.

    IP practice in Europe involves many interesting issues, and none more so than the  implications of Brexit and developments concerned the proposed Unified Patent Court (UPC). This webinar will bring together well-known IP practitioners from the U.K.’s Chartered Institute of Patent Attorneys and IPO’s European Practice Committee to discuss the latest updates relating to these topics and to provide insight on what the future of practice in Europe will look like. They will address issues including:

    • The Impact of Brexit on IP 
    • The UPC and the Unitary Patent Package
    • The Status of Ratification of the UPC 

    Speakers include Tony Rollins (former CIPA President) and Alicia Instone (CIPA Vice-President), as well as IPO European Practice Committee co-vice chair Aloys Hüttermann and committee member John Pegram. Dan Staudt, IPO President, will moderate the discussion. This webinar will present an excellent opportunity to learn more about IP practice in Europe. 

    Dan Staudt (Moderator)

    Siemens Corp.

    Daniel Staudt is Vice President and Chief IP Counsel of the Siemens Corporation IP Department. Dan is responsible for all IP legal matters for the Siemens North American Operating Companies including its digital industries, smart infrastructure, and energy businesses. He is President of IPO and has been practicing IP law for over 30 years.

    Aloys Hüttermann

    Michalski Hüttermann

    Aloys Hüttermann is a German and European Patent and Trademark attorney. A co-founder of Michalski Hüttermann, he has been a partner there since the beginning and works from its Düsseldorf office. He is an author of a book on the Unitary Patent system as well as a co-author of a textbook on Organic chemistry and has published a large number of juridical publications on IP in highly renowned journals. Since 2013 he has served as Vice Chair of IPO’s European Practice Committee and he also represented IPO at a hearing concerning the rules of procedure of the Unified Patent Court in 2014 in Trier, Germany.

    Alicia Instone

    Cleveland Scott York

    Alicia Instone is a Chartered Patent Attorney, a European Patent Attorney and a Chartered UK Trade Mark Attorney at Cleveland Scott York, an IP boutique with offices in the UK and Europe, based in the Hertfordshire Office. Currently, Alicia works particularly in the fields of chemistry, dyes and pigments photochromic materials, medical devices, laboratory consumables, traffic control, oil & gas and natural sciences in general. She sits on the Council for the Chartered Institute of Patent Attorneys as Vice-President and is an active member of its Trade Mark Committee.

    John Pegram

    Fish & Richardson, PC

    John B. Pegram is Of Counsel at Fish & Richardson P.C., a multi-office law firm concentrating in IP and technology law, based in the New York City office. John has been engaged in patent, trademark and copyright litigation, licensing, opinion and counseling matters of all types for over 50 years. He has been, and continues to be, active in bar associations, including that he served as President of NYIPLA and serves as a member of the US Bar – EPO Liaison Council and IPO’s European Practice Committee. He is a frequent author and lecturer on U.S. and international IP and litigation topics.

    Tony Rollins

    Rollins IP Strategies Ltd.

    Tony Rollins of Rollins IP Strategies Ltd. is an experienced IP practitioner who is based in the United Kingdom. At the Wellcome Foundation, he handled a diverse range of work in the pharmaceutical, diagnostic, animal health, environmental health and hygiene areas. He later served as Vice President of Intellectual Property of Amersham plc, headed up the European Patents group of MSD, and also led MSD’s Japanese patent department. Tony is the current chair of the International Liaison Committee and the former President of the Chartered Institute of Patent Attorneys. He is President of the Global Network of National IP Practitioner Associations.

  • Parallel Proceedings in District Court and the PTAB After NHK Spring (RECORDING)

    Contains 7 Component(s), Includes Credits

    This program will discuss the speedy rise of the Western District of Texas as a litigation hotspot and important PTAB decisions about Section 314 that have gone some way to change the complex interaction between post-grant proceedings at the PTAB and related district court actions. Panelists include the Hon. Alan Albright, U.S. District Court Judge for the Western District of Texas, and two patent litigators, one of whom is a former PTAB judge.

    This program will discuss the speedy rise of the Western District of Texas as a litigation hotspot and important PTAB decisions about Section 314 that have gone some way to change the complex interaction between post-grant proceedings at the PTAB and related district court actions. Panelists include the Hon. Alan Albright, U.S. District Court Judge for the Western District of Texas, and two patent litigators, one of whom is a former PTAB judge. 

    In May the PTAB designated as precedential the supplemental briefing order in Apple v. Fintiv. That decision, denying institution under § 314(a), was a further clarification of NHK Spring Co. v. Intri-Plex, a 2018 IPR decision that was designated precedential last year. NHK found that “[t]he advanced state of [a] district court proceeding is an additional factor that weighs in favor of denying the petition” because institution would not “provide an effective and efficient alternative.” Some panels have expanded the reasoning in NHK to deny institution solely because of the related district court case. Apple further identified the factors to be considered when there is a related district court trial.  

    This has had import mainly for plaintiffs in the WD TX. Since his accession to the bench in 2018, Judge Albright, sitting in Waco, has focused on speedy resolution of patent cases. WD TX, which includes Austin, can be a proper venue to sue many tech companies. The district is now on track to lead in new patent filings in 2020, surpassing Delaware, which won the crown back from ED TX after TC Heartland. Decisions regarding venue and “rocket dockets” are now important factors for patent owners to avoid IPR battles they would prefer to avoid. 

    Hon. Alan Albright

    U.S. District Court

    is a judge on the U.S. District Court for the Western District of Texas. Earlier he was a partner at the office of Bracewell in Austin. He served as a law clerk to Judge James Nowlin of the Western District from 1984 to 1986 and as a Federal magistrate judge for the district from 1992-1999. 

    Eley Thompson

    Foley & Lardner LLP

    Eley Thompson is a partner and IP lawyer with Foley & Lardner. He has led litigation teams handling complex cases that resulted in more than $100 million in recoveries. He also has handles post-grant proceedings before the USPTO. In addition to litigation, Eley provides counsel on patent program strategies and prosecution of intellectual property portfolios. Eley is vice chair of IPO’s Patent Litigation committee. 

    Trenton Ward

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner and patent litigator at Finnegan. Ward joined Finnegan in 2017 from the PTAB where he spent three years as a Lead Administrative Patent Judge. He served on panels for more than 275 Decisions on Institution and Final Written Decisions, authoring many. Trenton assisted the Chief Judge in formulating and executing policy for AIA trials and PTAB operations. Earlier he worked as an electrical engineer. 

  • Artificial Intelligence: Patentability and Inventorship in Europe (RECORDING)

    Contains 8 Component(s), Includes Credits

    Some of the most interesting and talked-about IP issues, both nationally and internationally, are those relating to artificial intelligence (AI). Among AI issues, patentability and inventorship are hot topics that will likely only continue to increase in importance. On this webinar, panelists will discuss how those issues are playing out in Europe.

    Some of the most interesting and talked-about IP issues, both nationally and internationally, are those relating to artificial intelligence (AI). Among AI issues, patentability and inventorship are hot topics that will likely only continue to increase in importance. On this webinar, panelists will discuss how those issues are playing out in Europe, including:

    • Developments at the European Patent Office related to AI patenting
    • The principles applied by the EPO when assessing AI patent applications and AI inventorship
    • Addressing hurdles to patenting AI technology
    • Protection of training methods and data and
    • Computer simulation case G1/19.


    Speakers will include Heli Pihlajamaa (the Director of Patent Law at the EPO) and Mike Jennings (of CIPA’s Computer Technology Committee), as well as IPO European Practice Committee co-vice chair James Signor and Committee member Tobias Kaufmann. If you expect that you will be encountering patent issues relating to AI in the future, or if you are already encountering such issues, this webinar is not to be missed.

  • Practical Guide to Diversity in the Legal Profession in a Post-George Floyd Era (RECORDING)

    Contains 6 Component(s), Includes Credits

    In this timely session of the IP Chat Channel, speakers will discuss the Practical Guide to D&I in the legal profession and reflect on how to improve diversity and inclusion. They will also highlight current issues affecting black IP professionals and the negative impact on diversity in general by the economic slowdown. They will offer concrete suggestions about what we can each do to promote these values in our profession for the good of all.

    A focus on diversity and inclusion in our profession is imperative in the post-George Floyd era.  In this timely session of the IP Chat Channel, speakers will discuss the Practical Guide to D&I in the legal profession and reflect on how to improve diversity and inclusion. They will also highlight current issues affecting black IP professionals and the negative impact on diversity in general by the economic slowdown. They will offer concrete suggestions about what we can each do to promote these values in our profession for the good of all. 

    Shruti Costales

    HP Inc.

    is patent counsel at HP Inc. with over fourteen years of experience in patent application preparation, patent application prosecution, patent counseling, and transactional and litigation matters. Prior to HP Inc., Shruti was in private practice for about thirteen years. During this time, Shruti worked for a mid-sized law firm and two patent boutiques. She also successfully founded and ran her own patent boutique for over six years. Shruti is also a former patent examiner in the polymers and fuels technology areas. Her technical experience includes undergraduate research on drug delivery systems and working as an engineering intern at Fortune 500 chemical and pharmaceutical companies. Shruti earned a BS in Chemical Engineering from Purdue University in 2000 and a JD from Franklin Pierce Law Center (now University of New Hampshire School of Law) in 2003. Shruti is chair of IPO’s Diversity & Inclusion Committee. 

    Eldora Ellison

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a director at Sterne, Kessler, Goldstein & Fox. Over the course of her 24-year career, Dr. Ellison has gained extensive experience in inter partes patent matters, building on a strong foundation in patent prosecution. Dr. Ellison’s practice also includes preparing and prosecuting patent applications; evaluating patent portfolios; counseling clients on intellectual property strategy, including Hatch-Waxman issues; and resolving inventorship disputes. She represents a variety of types of clients, including large multinational corporations, start-up companies, and not-for-profit organizations. She is a member of the firm’s Executive Committee, and she previously chaired the firm’s Professional Development Committee and the Diversity Committee. She earned her J.D. from Georgetown University Law Center, her Ph.D. in biochemistry, molecular and cell biology from Cornell University, and her B.S. in biology from Haverford College.

    Serena Farquharson-Torres

    Bristol-Meyers Squibb Company

    is senior counsel at Bristol-Myers Squibb Company where she is responsible for all aspects of patent procurement, counseling, due diligence, litigation and policy. She is located in Lawrenceville, NJ. Serena is focused on the global protection of the company’s innovation and brands. Serena works closely with R&D, manufacturing, and business colleagues to ensure meaningful exclusivity and freedom of operation for BMS products. Serena is also passionate about diversity and inclusion issues and is part of IPO’s Women in IP Committee and Diversity task force as well as the Diversity & Inclusion team of BMS legal department. Prior to joining BMS in 2016, Serena was Senior Counsel at Sanofi, Schering-Plough Corporation and in private practice. Serena has a B.S. in Chemistry from Howard University, Ph.D. in Biological Chemistry from the University of Minnesota and a J.D., from the University of North Carolina School of Law. Serena has frequently presented on IP topics on behalf of law associations and industry groups.

    Joel Stern

    NAMWOLF

    is the Chief Executive Officer of the National Association of Minority and Women Owned Law Firms, Inc. (NAMWOLF). NAMWOLF, founded in 2001, is a nonprofit trade association comprised of over 195 minority and women owned law firms in 44 states. NAMWOLF’S mission is to provide corporations the premier place to go to locate and hire minority and women owned law firms of the very highest caliber. Prior to this role, Joel was the Global Deputy General Counsel and COO Legal at Accenture.  Joel managed the Americas Legal team and also had primary responsibilities as the Chief Operations Officer of the 420+ member global legal group managing all operations of the Legal team including finance, IT, human resources, communications, facilities and support services. Additionally, he managed all outside counsel relationships across the globe.  During his tenure at Accenture, he was also tasked with revitalizing and then leading the Accenture Contract Management group. Throughout Joel’s accomplished career, he personally championed key diversity and inclusion initiatives including leading Accenture Legal Group’s award-winning diversity and inclusion programs.

  • Ethical Issues in Litigation Funding: An Update (RECORDING)

    Contains 7 Component(s), Includes Credits

    The webinar will analyze the many legal ethics issues raised for lawyers by litigation funding, including the question of who controls the litigation; the traditional law of champerty; confidentiality and privilege; disclosure and client consent; and possible conflicts if the case litigator is the one negotiating the funding.

    The hardship imposed on the economy by the coronavirus pandemic is ricocheting through the legal industry. Cuts in salaries and partner payouts, furloughs, and layoffs have become commonplace among law firms in recent months. 

    Litigation financers are ready to step into the breach with investments to pay attorney fees and expenses related to patent enforcement in return for hefty returns if the litigation successfully results in damages. Due to an inflow of new capital, about 40 commercial litigation funders are now active in the U.S. market, with combined assets under management estimated at $9.5 billion. Those funders also work directly with corporate or university patent owners to pay legal fees. 

    The webinar will analyze the many legal ethics issues raised for lawyers by litigation funding, including the question of who controls the litigation; the traditional law of champerty; confidentiality and privilege; disclosure and client consent; and possible conflicts if the case litigator is the one negotiating the funding. Panelists include a law professor who is an expert on legal ethics and litigation finance; the founder of an IP litigation firm that often takes patent cases on contingency and has held many discussions with funders; and a law firm litigator and legal ethics specialist who is hired to assess the ethics risks in funding deals.  

  • Litigation Funding Underwriting: How Good Is Your Patent Case? (RECORDING)

    Contains 7 Component(s), Includes Credits

    The webinar will give attendees sophisticated insight into how funders decide in which cases they will invest and what determines the pricing; how the calculus has changed since the advent of IPRs; surprises patent owners and law firms may encounter in their search for funds; and what work a law firm needs to accomplish on a case before seeking funding.

    The hardship imposed on the economy by the coronavirus pandemic is ricocheting through the legal industry. Cuts in salaries and partner payouts, furloughs, and layoffs have become commonplace among law firms in recent months. 

    Litigation financers are ready to step into the breach with investments to pay attorney fees and expenses related to patent enforcement in return for hefty returns if the litigation successfully results in damages. Due to an inflow of new capital, about 40 commercial litigation funders are now active in the U.S. market, with combined assets under management estimated at $9.5 billion. Those funders also work directly with corporate or university patent owners to pay legal fees. 

    The webinar will give attendees sophisticated insight into how funders decide in which cases they will invest and what determines the pricing; how the calculus has changed since the advent of IPRs; surprises patent owners and law firms may encounter in their search for funds; and what work a law firm needs to accomplish on a case before seeking funding. Panelists include a lawyer/executive with responsibility for assessing and underwriting legal risk in the IP space at a large litigation finance firm; the CEO of a brokerage firm dedicated to helping law firms and patent owners find litigation financing; and the founder of an IP litigation firm that has done deals with funders. 

    Charles Agee

    Westfleet Advisors

    is managing partner of Westfleet Advisors, a leading litigation finance advisor and broker. For fifteen years prior to founding Westfleet, he was a capital provider in the litigation finance industry and has personally overseen the origination, investment diligence, and structuring of financing transactions in over a thousand complex litigation matters.

    Eric Carlson

    Burford Capital

    is an IP principal at Burford Capital, a large litigation funder. Eric assesses and underwrites legal risk in the IP space. He works with law firms and IP holders to assess legal claims and leverage litigation finance. Prior to joining Burford, Eric worked as an IP attorney in private practice.

    Christopher Lee

    Lee Sheikh Megley & Hahn

    is a founder of the IP litigation boutique Lee Sheikh Megley & Hahn. He has served as winning trial counsel in high-stakes patent cases and has also advised companies in industry-wide licensing campaigns.

     

  • Discussion with Senior PTAB Judges on PTAB Operations in Light of COVID-19 (RECORDING)

    Contains 1 Component(s)

    This timely—and free for IPO members—webinar will feature a panel discussion with three senior PTAB judges. Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Michael Tierney, and Acting Vice Chief Judge Michael Kim will talk with Todd Walters (Buchanan Ingersoll), Co-Vice Chair of IPO’s U.S. Post-Grant Practice Office Practice Committee.

    This timely—and free for IPO members—webinar will feature a panel discussion with three senior PTAB judges. Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Michael Tierney, and Acting Vice Chief Judge Michael Kim will talk with Todd Walters (Buchanan Ingersoll), Co-Vice Chair of IPO’s U.S. Post-Grant Practice Office Practice Committee. They will discuss PTAB operations and recent trends and developments in practice before the PTAB in light of COVID-19. Topics to be addressed include maintaining schedules, handling requests for extensions of time, complying with statutory mandates, depositions, oral hearings, and unique issues that have arisen in light of current events.

    Todd Walters

    Buchanan Ingersoll & Rooney PC

    Todd Walters is the Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section. He is a current Vice-Chair of the Post-Grant Practice Committee of the Intellectual Property Owners, a past Chair of the Patent Trial and Appeal Board (PTAB) Trial Committee of the American Intellectual Property Law Association (AIPLA) and a past Chair of the USPTO Post Grant and Inter Partes Practice Committee of the American Bar Association-Intellectual Property Law (ABA-IPL) section. He has previously served as a member of the firm’s Board of Directors, and Executive Management team and Co-leader of the IP Section. He has also served as Vice-chair of the Interference Committee of the Intellectual Property Owners (IPO) association for approximately 10 years.

    Hon. Jacqueline Wright Bonilla

    U.S. Patent and Trademark Office

    The Honorable Jacqueline Wright Bonilla serves as Deputy Chief Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). Since her appointment as an Administrative Patent Judge in January 2012, she has conducted numerous post-grant patent trials under the America Invents Act (AIA), heard appeals from adverse examiner decisions in patent applications and reexamination proceedings, and rendered decisions in interferences. In her current role, she helps lead the PTAB as it handles cases and renders decisions in all areas of its jurisdiction. Previously, she worked for twelve years in private practice, including as a partner at Foley & Lardner, LLP. She also served as a judicial law clerk to the now-retired Chief Judge Randall Rader at the U.S. Court of Appeals for the Federal Circuit. 

    Hon. Michael W. Kim

    U.S. Patent and Trademark Office

    The Honorable Michael W. Kim serves as the Acting Vice Chief Administrative Patent Judge for Operations at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO) as of November 2, 2019. He was appointed to the PTAB on April 24, 2011. He was then appointed to Lead Judge in 2013. In addition to his management responsibilities, which includes coordinating the PTAB policy on subject matter eligibility and running the Judicial Law Clerk program, Judge Kim has conducted hundreds of inter partes reviews and post-grant reviews under the America Invents Act (AIA), and also has reviewed over a thousand adverse decisions of examiners upon applications for patents. He works primarily in the business methods, mechanical, and electrical technology areas. Prior to his appointment, Judge Kim was a patent attorney for PTAB. 

    Hon. Michael Tierney

    U.S. Patent and Trademark Office

    The Honorable Michael P. Tierney serves as Vice Chief Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). Vice Chief Judge Tierney was appointed to the PTAB on July 31, 2000 as an administrative patent judge in the Chemical Section, where he handled ex parte appeals of chemical cases. Judge Tierney joined the USPTO as a patent examiner, where he primarily examined applications for chemical compositions. Since being appointed as an administrative patent judge, Judge Tierney worked as a member of the Interference Trial Section, where he worked on interferences, reexaminations, and supervised two patent attorneys working on ex parte appeals. As part of the USPTO implementation of the America Invents Act (AIA), Judge Tierney led the PTAB’s comprehensive effort on trial rulemaking.