is a Partner in VLP’s Intellectual Property Practice Group. His practice emphasizes the building and refining of patent portfolios, strategic advice concerning competitive IP rights, and due diligence for technology-based financial, merger/acquisition and other business transactions. David most often handles prosecution matters before the United States’ and foreign patent offices, but he has also successfully concluded litigations and other disputed matters. He regularly works with company founders, investors, engineers and scientists across the information technology industry in areas such as data storage, database systems, financial services, social media, network security, medical devices, semiconductors, optics, signal processing, and antennas.
For more information or to contact David, please visit his Firm Profile Page.
Ever since the introduction of AIA post-grant proceedings, many have questioned whether the procedural deck is stacked against patent owners. Limits on making claim amendments, having to bear the burden of showing the validity of claims already issued, and being subjected to multiple serial attacks, certainly have made it seem so. But have recent cases signaled the playing field may now be tipping ever so slightly in a patent owner’s favor? Or are these decisions just an illusion?
Oil States Energy Services LLC v. Greene’s Energy Group, LLC, now scheduled for oral argument before the Supreme Court on November 27, is clearly receiving all the attention this fall. The possibility of finding Patent Trial and Appeal Board (PTAB) post grant proceedings unconstitutional cannot be understated. But oral arguments will also be heard on that same day in the less-noticed SAS Institute v. Matal… Should any form of IPRs survive Oil States, the following SAS Institute decision should be watched with equal anticipation. A reversal in SAS Institute will no doubt have you rethinking your PTAB strategy.
In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of these proceedings, anyone may file a petition challenging the validity of an issued patent. Patent practitioners have long been trained to draft patents that survive litigation. It is no secret that most asserted patents now end up before the PTAB, and the PTAB tends to use different rules that favor the challenger. As we approach the five year anniversary of the PTAB, patent practitioners should reconsider long-held strategies. BRI and evidence standards adopted by the PTAB make surviving post-grant proceedings especially challenging. Pursue a narrowly-focused patent with clear and unambiguous terms, to avoid post-grant proceedings or survive them when instituted. A robust prosecution that addresses a range of issues, corrects Examiner’s errors, and places evidence on the record helps achieve the same goals.