PTAB Discretion: Exploring the New Metes and Boundaries (RECORDING)

Recorded On: 05/23/2019

The PTAB has issued a large number of precedential decisions in the last few months, following the Board’s issuance of its Revised Standard Operating Procedure 2 (“SOP2”) in September 2018.  Just this month, the newly established Precedential Opinion Panel designated as precedential two additional IPR decisions: Valve Corp. v. Elec. Scripting Prods., Inc. and NHK Spring Co., Ltd. v. Intri­-Plex Techs., Inc.

Many of these recent precedential decisions articulate how the PTAB will use its discretion as granted in AIA sections 314, 315, and 325, and are therefore of key concern to petitioners, patent owners, and their counsel.  

This webinar features a Vice Chief Administrative Patent Judge of the PTAB, an in-house counsel, and a litigator. They will explore the scope and impact of recent important PTAB precedential opinions, as well as the decisions that have been designated “informative.” 

Topics to be discussed include:

  • Now binding cases regarding follow-on petitions, where the same patent is challenged multiple times by the same petitioner or by a series of petitioners
  • PTAB discretion regarding first-filed petitions
  • Same party issue joinder and real-party-in-interest issues as articulated in two cases named Proppant Express Investments, LLC v. Oren Techs., LLC
  • PTAB discretion to deny institution
  • Details on SOP2 changes to procedures


  • Orion Armon, Cooley LLP
  • Kirby Lee, Ecolab
  • Vice Chief Judge Scott Weidenfeller, U.S. Patent and Trademark Office

Orion Armon

Cooley LLP

 is a partner at Cooley LLP. He is a trial lawyer who focuses on multi-venue, complex patent litigation matters in district courts and before the PTAB and the U.S. Court of Appeals for the Federal Circuit. He has particular experience utilizing inter partes review in combination with district court litigation strategies. As lead counsel for Enfish, Orion argued the appeal in Enfish v. Microsoft Corp. (Fed. Cir. 2016). He is a member of IPO’s U.S. Post-Grant Patent Office Practice Committee.

Kirby Lee


 is assistant chief IP counsel at Ecolab, a global leader in water, hygiene, and energy technologies and services.  Kirby previously worked at the Department of Justice and the White House, representing the U.S. government in intellectual property litigation and serving as a senior policy advisor to the IP Enforcement Coordinator. HHeHHe also served as a clerk to the Hon. Alan Lourie of the Federal Circuit. Kirby is co-chair of the IPO litigation committee.

Vice Chief Judge Scott Weidenfeller

U.S. Patent and Trademark Office

 is Vice Chief Administrative Patent Judge of the Patent Trial and Appeal Board. He manages operational and administrative aspects of the Board, including providing guidance on legal issues and the impact of changes to internal Board procedures. He previously served as Associate Solicitor of the USPTO. His primary responsibilities included managing litigation against the USPTO involving the AIA, including challenges to PTAB post-issuance proceedings. Before joining the USPTO, he worked in private practice and served as a law clerk to the Hon. Timothy B. Dyk of the Federal Circuit.


PTAB Discretion: Exploring the New Metes and Boundaries (RECORDING)
Open to view video.
Open to view video.
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