Recently named U.S. Post-Grant Firm of the Year, Sterne Kessler has industry-leading experience in all proceedings before the Patent Trial and Appeal Board (PTAB). In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow.

Christian A. Camarce is a director in Sterne Kessler’s Electronics Practice Group. He is actively involved in the firm’s post-grant practice and represents patent owners and petitioners in inter partes review proceedings before the PTAB. He has also represented patent owners and requesters in reexamination proceedings before the USPTO’s Central Reexamination Unit. Leveraging his experience as a former Intel senior integrated circuit (IC) design engineer, Christian also counsels clients on global IP strategy and patent portfolio management in a wide variety of technologies, including IC chip design and packaging, semiconductor fabrication, and wireless communications.

Christian was recently ranked in the top 25 of the “100 Best Performing Attorneys Representing Patent Owners” before the PTAB in the 2023 Patexia PTAB Intelligence Report, which evaluated the performance of thousands of attorneys over the five-year period from July 1, 2018, through June 30, 2023. The report also ranked Christian in the “100 Most Active Attorneys Representing Patent Owners” before the PTAB. Patexia also recognized Christian as being in the top 50 of the “100 Best Performing Attorneys Overall – Patent Prosecution” and in the top 50 of the “100 Best Performing Attorneys in High-Tech – Patent Prosecution.”

Christian is a contributing author of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017).

What do you enjoy most about your PTAB practice?

I enjoy the interplay between post-grant proceedings and patent portfolio development. Gaining experience and knowledge on different (and often creative) ways patents can be challenged before the PTAB provides valuable insight on how to advise clients to build stronger and more robust patent portfolios. This intersection of post-grant proceedings and patent portfolio development underscores the importance of a comprehensive and coordinated approach to IP management. Navigating these complexities is paramount to helping clients survive potential challenges before the PTAB and achieving the best possible outcomes.

What are some recent trends you’re seeing at the PTAB?

An area to watch in 2024 is legislation affecting the PTAB. Last year, Congress introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. Similar to other major legislative proposals in the last few years, the PREVAIL Act aims to reform the PTAB.

The proposed changes in the PREVAIL Act would affect PTAB practice in several dramatic ways. For example, the proposed changes include requiring standing for IPR petitioners, raising the bar to require a showing of invalidity by “clear and convincing” evidence, and prohibiting parallel litigation of invalidity at the district court/ITC and the PTAB based on patents or printed publications. These proposed changes, among others, present potentially significant changes that practitioners and their clients should think about to shape future litigation strategies before the PTAB.

What is the biggest challenge your clients are facing today?

Keeping current on the dynamic nature of the PTAB is a challenge many clients face. Over the years, many significant developments have affected PTAB practice, through PTAB precedential decisions, Director Review decisions, Federal Circuit review of PTAB decisions, USPTO rulemaking, and proposed legislation. For example, in 2023, a Delegated Rehearing Panel (DRP) was established to allow the Director to delegate review of PTAB decisions, including institution decisions and final written decisions. Prior to the formation of the DRP, petitioners had no appeal options to an IPR denial. This, among many other significant developments at the PTAB, necessitates sophisticated PTAB counsel to navigate clients through the complex and ever-changing PTAB landscape.

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