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IP: Navigating a contested case trial in front of the new PTAB

The uncharted territory of inter partes review and covered business method patent review proceedings, explained

Inter partes review (IPR) and covered business method patent review (CBM) proceedings have been available for 9 weeks—since Sept. 16. During the first two months of these proceedings, 51 IPR petitions and 14 CBM petitions have been filed, with only six being found non-compliant or incomplete. But the pace of filing during the second month has slowed significantly since the proceedings were introduced, as shown in the graph below. 

Important considerations for in-house counsel

There are several aspects of a contested proceeding that in-house counsel should pay close attention to when managing a case.

Early identification of issues is crucial. The timelines in contested proceedings are short and some issues require long lead times. For example, any attempt to antedate or “swear behind” a cited reference often requires a concerted effort to locate and review both conception and diligence evidence. Also, retaining appropriate subject matter experts who can effectively stand for deposition may be time-consuming. Finally, locating inventors (if necessary) and amassing secondary consideration evidence (if available) to rebut obviousness may also be long-lead-time items.

Contributing Author

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Jon E. Wright

Jon E. Wright (jwright@skgf.com) is a director at Washington, DC-based intellectual property law firm Sterne, Kessler, Goldstein & Fox P.L.L.C. who holds significant experience...

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Contributing Author

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Jason D. Eisenberg

Jason D. Eisenberg (jasone@skgf.com) is Of Counsel at Sterne Kessler where he focuses his practice on strategic counsel with regard to pre and post...

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