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PTAB Practice Post-SAS – What You Need to Know

Monday, December 3, 2018 5:00 PM to 7:00 PM
Boston Bar Association - 16 Beacon Street, Boston, MA


In SAS Institute Inc. v. Iancu, the Supreme Court interpreted 35 U.S.C. 318(a) as requiring the PTAB to issue a final written decision with respect to the patentability of any claims challenged by the Petitioner in an inter partes review. Subsequently, the PTAB issued guidance indicating that its decision whether to institute an IPR proceeding would address all grounds raised by the Petitioner.  The SAS decision and subsequent PTAB guidance raise new strategic considerations for PTAB practitioners where there is concurrent litigation.  What is the scope of potential estoppel? Should the Petitioner include all potential challenges in its petition or only its strongest grounds? Should Petitioner divide potential challenges into multiple petitions to maximize chances of institution? In what forum should indefiniteness arguments be raised?  Does filing PGR petitions for post-AIA patents still make sense? Should the Patent Owner file a Preliminary Response? Come hear experienced panelists debate these issues in view of recent jurisprudence issued by the PTAB and district courts, and receive practical advice on formulating successful PTAB strategies post-SAS.

Please join us for a networking cocktail reception after the program from 6:00 to 7:00 PM.

Registration Categories:
BBA Member – Free. Included as part of your membership.
Non-Member - $100.00

Sponsoring Section/Committee(s):




Taylor Richard


BBA Event Calendar