Perspectives on the PTAB Newsletter – September 2017

Sterne Kessler is pleased to announce the re-launch of its Perspectives on the PTAB Newsletter. The Sterne Kessler Perspectives on the PTAB Newsletter will publish the 3rd Wednesday of every month starting October 18, 2017. The newsletter will include three areas of interest every month: an installment of a multi-part segment, a practice tip/benchmarking article, and an Appellate corner article.

In the first six months, articles will cover many topics, including:

• A look at global and big data perspectives of return on investment for patent portfolios, with an eye toward surviving AIA attack,
• What patent owners and petitioners need to know about 325d,
• The narrowing of the effectiveness of Observations,
• PTAB’s treatment of design patents,
• PTAB’s treatment of the lead compound test,
• Effective use of depositions,
• APA’s influence on AIA trials, where the boundary is for excluding evidence,
• When it is in a company’s best interest not to file an AIA petition,
• The current interplay of PTAB, ITC, District Court, and foreign courts.

As September 2017 marks half-a-decade of the AIA proceedings at the PTAB, Sterne Kessler was honored to contribute four IP360 articles discussing:

• Eldora L. Ellison, Ph.D., David W. Roadcap, Ph.D., and Pauline M. Pelletier – Five Years at the PTAB: Lessons Learned and Best Practices Adopted (from the patent owners and the petitioners’ perspective)
• Mike E. Joffre, Jon E. Wright, and Pauline M. Pelletier – Precedential Decisions from PTAB Appeals: Takeaways for Petitioners and Patent Owners
• Michael D. Specht and Jonathan Tuminaro, Ph.D. – PTAB and District Courts: Effectively Managing the Intersection of Jurisdictions
• Jeremiah B. Frueauf, Jason D. Eisenberg & Mark W. Rygiel – Patent Prosecution in the PTAB Era: Prosecuting Patents that Survive PTAB Scrutiny

The Perspectives on the PTAB Newsletter team is proud to add our newsletter to the three already publishing and highly sought after Sterne Kessler newsletters covering:

• Global Patent Prosecution Newsletter (Edited by Paul A. Calvo, Ph.D.)
• MarkIt to Market (Edited by Monica Riva Talley)
• The Goods on IP Newsletter (Edited by Mark W. Rygiel)

Finally, Robert Sterne publishes a weekly post regarding how the fourth industrial revolution is effecting the global patent landscape.

If you are interested in knowing more about or receiving any of these, please contact me directly at
jasone@sternekessler.com or 202.772.8645.

Thank you.
Jason D. Eisenberg, Editor of Perspectives on the PTAB Newsletter (and Co-Editor of Patent Office Litigation, 2nd Edition)