Broadcast Date: Wednesday, March 18, 2020
from 12:00 pm to 1:00 pm (ET)


In 2019, the United States Patent and Trademark Office (USPTO) continued implementing policy initiatives of Director Iancu that may significantly affect trial practice before the Patent Trial and Appeal Board (PTAB). Some of the developments in 2019 include expansion of the PTAB’s discretion to deny petitions, a new claim amendment process, and the issuance of the first precedential opinions from the recently created Precedential Opinion Panel. In addition to the Director’s initiatives, in Arthrex v. Smith & Nephew, a case whose implications are still being sorted out, the Court of Appeals for the Federal Circuit announced a judicial fix to a constitutional defect in the appointment of PTAB judges.

In this LIVE Webcast, patent law experts Ted M. Cannon (Knobbe Martens) and Brian Murphy (Haug Partners) will provide the audience with an in-depth analysis of these recent developments in the PTAB practice. In addition to discussing Director Iancu’s initiatives and Arthrex generally, the speakers will provide focused insight and practice tips regarding a recent Precedential Opinion Panel decision regarding what evidence is needed to prove that a publication qualifies as prior art that can be relied on to invalidate a patent.

This LIVE Webcast will discuss the following key topics:

  • Expansion of the PTAB’s discretion to deny petitions
  • New claim amendment process in PTAB cases
  • The PTAB’s new Precedential Opinion Panel, including a focused discussion of the panel’s decision about what evidence is needed to prove that a publication qualifies as prior art
  • The Federal Circuit’s Arthrex decision
  • Potential implications of these developments


Course Level:



Advance Preparation:

Print and review course materials


Method of Presentation:

On-demand Webcast (CLE)



General knowledge of patent laws


Course Code:



NY Category of CLE Credit:

Areas of Professional Practice


Total Credit:

1.0 CLE

Speaker Panel:

Brian Murphy, Partner
Haug Partners

Brian Murphy served as a Lead Administrative Patent Judge at the Patent Trial and Appeal Board from 2014–2017, where he presided over nearly 200 Inter Partes Review, Post Grant Review, and Covered Business Method Review proceedings. Brian drafted more than 60 substantive decisions and mentored numerous AIA trial section judges during his time as a PTAB Lead Judge. He is also a trial lawyer with thirty years of experience litigating and trying patent cases in the federal courts and International Trade Commission, with particular expertise in Hatch-Waxman patent litigation. Brian is the Chair of Haug Partners’ Post Grant Review Practice.

Ted M. Cannon, Partner
Knobbe Martens

Ted M. Cannon has litigated intellectual property disputes in district courts, appellate courts, and the United States Patent and Trademark Office for more than 17 years.  He represents both intellectual property owners and defendants across a range of industries, including computer hardware and software, medical devices, and financial products and services.  Since the creation of the Patent Trial and Appeal Board in 2012, Mr. Cannon has consistently ranked among the most active PTAB litigators, trying more than 75 PTAB cases from filing through termination or final written decision, including more than 20 through appeal.  He has also ranked among the highest performing PTAB attorneys.  He is now serving as co-chair of the PTAB litigation practice group at Knobbe Martens.


SEGMENT 1: Brian MurphyPartner Haug Partners

  • Director Iancu’s Policy Initiatives at PTAB
    • Expansion of Discretionary Denial Power
    • New Claim Amendment Process
    • New Precedential Opinion Panel (brief discussion of Proppant, Hulu, Hunting Titan)
    • Discussion of Arthrex v. Smith & Nephew case

SEGMENT 2: Ted M. CannonPartner Knobbe Martens

  • Summary of Hulu
    • “At the institution state, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.”
    • POP rejected more pro-petitioner position that a reference should be presumed to be a printed publication at the institution stage.
    • POP also rejected more pro-patent owner position that the petition should be required to include all of the evidence needed to prove a reference is prior art by a preponderance of the evidence.
  • Petitioner Strategy
    • If possible, use prior art whose prior art status cannot be challenged (102(b) patents and patent publications) or is hard to challenge (well-known and respected industry publications)
    • Start early to gather evidence of prior art status
    • Don’t assume you can rely on post-institution supplemental information
  • Patent Owner Strategy
    • Carefully consider whether you have a viable challenge to prior art status
    • Raise viable challenges to prior art status in the POPR – Board may allow petitioner to supplement if IPR is instituted
    • Don’t rely solely on challenge to prior art status – Board more likely to exercise discretion to deny if challenge to prior art status is combined with strong merits and procedural arguments

Date & Time:

Wednesday, March 18, 2020

12:00 pm to 1:00 pm (ET)

Who Should Attend:

  • Patent Law Attorneys and Consultants
  • Intellectual Property Attorneys
  • Patent Agents
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Brian MurphyPartner
Haug Partners
Ted M. CannonPartner
Knobbe Martens



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