PTAB Bar Association - Event Information

Event Name:Webinar: Discussion of New USPTO Guidance on PTAB Discretionary Denials and AAPA
Event Type(s):Webinar
Description:This panel will discuss leading issues in the recent USPTO guidance regarding Discretionary Denials and Applicant Admitted Prior Art (AAPA). The panel will discuss implications of the new guidance, litigation strategies in response to the guidance, and future issues that may arise out of the decisions. Join us to hear perspectives on the PTAB guidance.  Speakers include: Judge Michael Tierney, Judge Karl Easthom, Teri-Lynn Evans, and Frank Bernstein, moderated by Frederic Meeker.

Previously, the USPTO’s framework under Apple Inc. v. Fintiv allowed the PTAB to deny review based on a parallel infringement case advancing in a federal district court or at the International Trade Commission. According to the updated guidance on discretionary denials, denial under Fintiv can be avoided in parallel proceedings if there is “compelling evidence” of unpatentability or, where there is a Sotera stipulation, according to which a petitioner will not pursue in District Court Litigation any ground raised, or that could have reasonably been raised, in an IPR. International Trade Commission (ITC) cases will not be considered in a Fintiv analysis, and the proximity of the trial date to the PTAB’s projected statutory deadline for providing a final written decision will now be based on the “median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.”
According to the updated guidance on the use of applicant admitted prior art (AAPA) in IPR proceedings, AAPA can be relied upon in combination with one or more patents or printed publications to support the petitioner’s grounds of unpatentability, consistent with the Federal Circuit’s holding in Qualcomm v. Apple Inc. The new guidance states that the number of limitations in the claims and the order of the limitations in the claims in the prior art have no bearing on the case.

PTAB Bar Webinar Registration - Zoom Link

  • Michael Tierney, Vice Chief Administrative Patent Judge, USPTO
  • Karl Easthom, Administrative Patent Judge, USPTO
  • Teri-Lynn Evans, Assistant Deputy General Counsel, Comcast
  • Frank Bernstein, Partner, Squire Patton Boggs
  • Frederic Meeker, Principal Shareholder, Banner Witcoff
Complimentary CLE Credit
CLE for this program is sponsored and administered by Banner Witcoff. Application for one hour of CLE credit will be sought in IL and VA.  Applications for credit in other states will be considered upon request.  Please provide complete bar information during registration to seek credit.  Please note that because of various jurisdictional requirements, we cannot guarantee that CLE applications will be approved. 
Event Date:6/30/2022
Event Time:2:00 PM - 3:00 PM Eastern
Links:PTAB Bar Webinar Registration - Zoom Link
Outlook/vCalendar/Google:Click on the icon next to the date(s) to add to your calendar:
Email Reminder:click here to setup an email reminder for this event

return to PTAB Bar Association