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The PTAB Turns 5 – What We’ve Learned

The PTAB Turns 5 – What We’ve Learned

September 16, 2017 was the fifth anniversary of the establishment of the U.S. Patent and Trademark Office Patent Trial and Appeal Board. To mark this milestone, attorneys at Sterne Kessler Goldstein & Fox PLLC wrote a series of articles published in Law360 discussing the significance the PTAB has had on the practice of intellectual property law.


The first article “PTAB At 5: Part 1 — Surprises And Lessons Learned,” written by Eldora Ellison, David Roadcap and Pauline Pelletier, explores the PTAB’s first five years from patent owners’ and petitioners’ perspectives. The article considers the reality versus original expectations of the new trial-like PTAB proceedings created by the America Invents Act, as well as the prominent issues that have been addressed.

The second article “PTAB At 5: Part 2 — Patents That Survive PTAB Scrutiny,” written by Jason Eisenberg, Jeremiah Frueauf and Mark Rygiel, discusses insights learned from PTAB challenges that should be considered when developing an effective "prep and pros" strategy at the PTAB. The strategies use a global outlook to consider the advances in big data that need to be taken into account when developing IP portfolios.

The third article “PTAB At 5: Part 3 — Fed. Circ. Statistics,” written by Michael Joffre, Pauline Pelletier and Jon Wright, analyzes statistics from over 250 judgments and 120 issued opinions deciding Federal Circuit appeals of post-grant proceedings. The data reveals how the court has addressed those appeals and, conversely, how those appeals are affecting the court.

Finally, the fourth article “PTAB At 5: Part 4 — At The Intersection Of PTAB And Courts,” written by Michael Specht and Jonathan Tuminaro, discusses the intersection of PTAB and district court jurisdiction as it relates to patent invalidity challenges. Specifically, the article addresses key aspects that impact practitioners.

In addition, directors Eldora Ellison and Jon Wright were quoted in Law360’s two-part series written in honor of the PTAB’s fifth anniversary. Eldora was quoted in the first article “Things We’ve Learned As the PTAB Turns 5”, while Jon was quoted in the second article “Life After 5: Issues Facing The PTAB”.

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