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.

Daniel Block is a director in Sterne Kessler’s Electronics Practice Group. His practice focuses on patent litigation in federal district courts and at the U.S. International Trade Commission. He has also served as counsel in over 110 post-grant proceedings at the PTAB. His expertise covers many areas of computing, including computer graphics, networking communications, web services, complex computer architectures, and storage systems.

Dan was recently ranked in “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 July 1, 2018, through June 30, 2023. He was also named to Best Lawyers “Ones to Watch in America” in 2024.

Dan is a contributing author of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017). He also served as an advisor to associates participating in the PTAB’s Legal Experience and Advancement Program (LEAP), which provides associates with training and development opportunities in PTAB proceedings, including oral arguments.

What is the biggest challenge your clients are facing today?

I think one challenge for my clients is managing the interplay between the PTAB and district court proceedings. Many of the more popular district court venues for patent matters move extremely quickly and are hesitant to grant stays due to this fact. That typically means that defendants need to move very quickly if they want the PTAB to have any impact on the district-court proceeding. But of course, you need to balance that with the notion that you will really only get one shot at the PTAB with the rise in discretionary denials. So you need to balance acting quickly with ensuring that your positions are well-developed and strong, which can be quite challenging.

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

Overall, one trend I’ve noticed at the PTAB is the tendency for some claims, especially dependent claims, to survive a PTAB challenge. In the early days of the PTAB, the final written decisions were more typically all-or-nothing outcomes (and there are a variety of explanations for why that was). But more recently, I have seen a large number of split outcomes. This has caused many Petitioners to turn to reexaminations, which I think is one reason you’ve seen a recent resurgence in ex parte reexaminations.

What do you enjoy most about your PTAB practice?

My favorite part about practicing at the PTAB is that sometimes the most ultra-technical argument can win the day. I’m a highly technical person—some might even say “nerd” —and I love being able to point out technical errors in the other side’s analysis. In other venues, it is often hard to translate those errors into wins because they can be difficult to explain. But not so at the PTAB because of how highly technical the judges are. It’s extra satisfying to me when you win a case because of one of these technical arguments.

© 2024 Sterne, Kessler, Goldstein & Fox PLLC