Using PTAB Proceedings to Challenge and Defend Patents



About the Course:

This session provides crucial insights into a plethora of procedural changes taking place at the Patent Trial and Appeal Board. The General Plastic factors, which the USPTO director can refer to in denying AIA trial petitions, are discussed in great detail.

The following are among the issues discussed in this crucial webinar:

  • How will the termination of the Covered Business Methods track at the PTAB affect the ability to challenge business methods patents?
  • To what extent are reduced institution rates affecting settlements within the context of PTAB procedures?
  • What standing requirements, if any, are necessary to mount inter partes review challenges?
  • How can start-up companies benefit from the ease of filing patent invalidity challenges at the PTAB?
  • To what extent are contingency litigators including the defense of patents challenged at the PTAB in their representation agreements?
  • What impact might changes taking place at the PTAB have on complaints filed at the International Trade Commission?
  • In what circumstances may parallel petitions be instituted?
  • When, and to what extent, may discovery be conducted during PTAB proceedings? To what extent is expert testimony available at PTAB proceedings?
  • How does the doctrine of estoppel impact the intersection of proceedings at the PTAB and the International Trade Commission?
  • Why is it said that the PTAB is a “Court of Obviousness?”
  • How might the Phillips claim construction standard impact stays in district court litigation?
  • Is the fact that a patent sustained an invalidity attack typically admissible in district court litigation??

The following are among the decisions illuminated during this session:

  • General Plastic Co., Ltd. v. Canon Kabushiki Kaisha
  • Shenzhen Silver Star Intelligent Technology Co. Ltd., v. iRobot Corp
  • NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc.
  • Wirtgen America, Inc. v. Caterpillar Paving Products Inc.
  • Valve Corp. v. Elec. Scripting Prods., Inc.
  • Adobe Inc. v. Rah Color Techs. LLC

Course Leaders: Scott McKeown, Partner, Ropes & Gray

Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 270 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators.

As a Professorial Lecturer in Law at The George Washington University Law School, Scott lectures and writes extensively on PTAB proceedings. He is a former chair of the American Bar Association, Intellectual Property Law Section Committee 104 (Post-Grant USPTO Proceedings), and was a founding member of the PTAB Bar Association. Scott also maintains an award-winning blog,, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings.

Prior to becoming an attorney, Scott worked as an electrical engineer for a government agency, troubleshooting embedded systems and circuit designs. He also has experience across a wide range of related technologies, including computer software, wireless telecommunication protocols, network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.

Course Length: Approx. 1.5 hours

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