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.

Jason A. Fitzsimmons is a director in Sterne Kessler’s Mechanical & Design Practice Group and a member of the firm’s PTAB Leadership Council. He specializes in conducting complex post-grant proceedings at the USPTO and has a keen understanding of their interplay with district court proceedings. Over the last decade, he has been counsel in over 100 PTAB trials.

Jason was recently ranked in the top 50 of the “100 Best Performing Attorneys Overall” before the PTAB in the 2023 Patexia PTAB Intelligence Reportwhich evaluated the performance of thousands of attorneys over the five-year period July 1, 2018, through June 30, 2023. The report also ranked Jason in the top 50 of the “100 Best Performing Attorneys Representing Petitioners” before the PTAB as well as the “100 Most Active Attorneys Representing Patent Owners” and the “100 Most Active Attorneys Overall” before the PTAB. Jason was also named to the Best Lawyers “Ones to Watch in America” list for 2024.

Jason is a contributing author of Patent Office Litigation, Second Edition, published in 2017, which provides a comprehensive exploration of PTAB trials, including their interaction with other aspects of patent procurement and enforcement. He also co-leads Sterne Kessler’s engagement in the PTAB’s Legal Experience and Advancement Program (LEAP), which provides associates with training and development opportunities in PTAB proceedings.

What is the biggest challenge your clients are facing today?

We represent both petitioners and patents owners, and a challenge that affects both sides is staying apprised of the ever-changing PTAB landscape. Having sophisticated PTAB counsel that understands how to apply recent changes in PTAB precedent and procedure can be the difference between winning and losing at the PTAB. And that ultimately affects our clients’ leverage in concurrent district court litigation.

In the past year, Director Vidal has been active in providing guidance to panels, for example, by clarifying how they should apply the discretionary denial frameworks under Fintiv and Advanced Bionics. The Director also sua sponte granted Director Review (a procedure itself that was recently revised) in the Xerox case, which she designated as precedential, affirming that declarant testimony that merely repeats conclusory assertions in the petition without citing additional evidence or providing additional reasoning should be given little weight.

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

The interplay between PTAB and district court proceedings continues to be a key issue for both patent challengers and patent owners. For example, estoppel law—under Section 315(e) and collateral estoppel—continues to evolve. The Federal Circuit’s Ironburg v. Valve Corp. opinion in April this year clarified that § 315(e)(2) estops a petitioner from asserting invalidity grounds in district court that a “skilled searcher” conducting a diligent search reasonably could have been expected to discover. Collateral estoppel is an issue that is gaining traction and again highlights the interplay between PTAB and district court litigation. The Google v. Hammond Federal Circuit opinion from December 2022 applied collateral estoppel to invalidate claims of a patent related to another patent whose claims were found unpatentable at the PTAB, even though the two patents used slightly different claim language to describe substantially the same invention. I think this opinion reinforces that parties on both sides of the “v.” need to critically evaluate how and whether PTAB decisions can affect their overall litigation strategy.

What do you enjoy most about your PTAB practice?

I love practicing before the PTAB and really enjoy the unique perspective I have on PTAB practice. I was a junior associate when the PTAB was formed and have been involved in PTAB trials since their inception over a decade ago, so I have experience with every aspect of PTAB trials—from prior art searches and petition analysis to brief writing, depositions, and oral arguments. Now, I am really enjoying developing holistic strategies with clients on complex cases with intertwined PTAB and district court proceedings. Knowing the ins-and-outs of each PTAB stage helps me counsel clients on the most effective times to implement leverage in order to obtain the best outcome across both forums.

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