Defining the PTAB: Click to Call and Windy City
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The America Invents Act became law more than seven years ago, but the adjudicatory power of its signature creation, the Patent Trial and Appeal Board, continues to be refined by the judiciary. In the past few months, the Federal Circuit, with its decision in Facebook v. Windy City, and the Supreme Court, in Thryv v. Click to Call, both made important clarifications regarding the PTAB’s authority in important matters such as the time bar and joinder.
Not all the implications of these cases are obvious, nor are they ways in which they interact. Panelists include a litigator who helped change post-grant practice on behalf of a client in the Supreme Court’s 2018 SAS case; a law professor who is an authority on the Federal Circuit; and a leading practitioner at the PTAB. They will untangle the complexities involving all the players including the PTAB, the director of the USPTO, and the Federal Circuit, and assess who emerges as a winner and in what way. They also will give an analysis of how practice could change, including:
- What other PTAB determinations will be found to be “final and nonappealable” in addition to time bar determinations?
- What happens to appeals that have been decided or are pending at the Federal Circuit on matters that now are no longer appealable?
- What is the impact on proceedings involving state sovereign immunity?
- What are the implications of the PTAB having enlarged unchecked power? What is the role of the USPTO’s Precedential Opinion Panel (POP)?
is a partner at Jones Day in Washington, DC. He is head of the firm’s Federal Circuit team and has almost 30 years’ experience as a leading appellate and intellectual property litigator. His experience includes five US Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. He is Vice-Chair of IPO’s Amicus Brief Committee.
University of Missouri School of Law
is associate professor of Law at the University of Missouri School of Law. Earlier he was a patent attorney at McDonnell Boehnen Hulbert & Berghoff LLP. An engineer, Dennis worked before law school as a research fellow at NASA’s Glenn Research Center, as a software developer at the Mayo Clinic’s department of biomedical imaging, and as a Peace Corps Volunteer in Ghana, West Africa. He is the editor of the Patently-O blog.
Ropes & Gray LLP
is a partner in Ropes & Gray’s intellectual property litigation practice and chairs its Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the USPTO and related appeals to the Federal Circuit. Scott has handled more than 300 PTAB matters since 2012, including those in which more than $500 million was at stake. Scott also maintains a blog, PatentsPostGrant.com. Prior to becoming an attorney, Scott worked as an electrical engineer.