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Mastering the PTAB: Strategies and Insights for Post-Grant Battles and Appeals

24Sep

In today’s lecture, we will explore key aspects of practice before the Patent Trial and Appeal Board (PTAB), which plays a central role in both challenging and defending patent rights. The PTAB handles a range of proceedings, including inter partes review (IPR), post-grant review (PGR), and ex parte appeals. While IPR and PGR are trial-like proceedings initiated by third parties to challenge the validity of issued patents, ex parte appeals arise when a patent applicant contests an examiner’s rejection during prosecution. We’ll discuss the procedural framework, strategic considerations, and recent trends in both adversarial and appeal contexts, providing a comprehensive understanding of how the PTAB shapes the U.S. patent system.

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Speakers

Kirsten Grüneberg, Grüneberg and Myers – Intellectual Property Law

Kirsten Grüneberg, Grüneberg and Myers – Intellectual Property Law

Dr. Kirsten A. Grüneberg co-founded Grüneberg and Myers PLLC in 2017. Less than 3 years later, the firm was listed in IAM Patent 1000 by Intellectual Asset Management as one of the world’s leading IP firms. Dr. Grüneberg has the rare honor of being listed repeatedly in IAM Patent 1000 as well as IAM Strategy 300 naming the world’s top IP professionals and IP strategists. In addition, Dr. Grüneberg was honoured as an IP Star by Managing Intellectual Property (MIP) and a Life Science Star by LMG Life Sciences. IAM notes: “A model of flexibility, speed, cost-effectiveness and quality, forward-looking Tysons, Virginia patent boutique Grüneberg and Myers has recorded striking growth of late. With prosecution the bedrock of its practice, the ensemble has been structuring robust protection for a host of global companies across multiple industries. It is not just a filing shop, though; strategic value is packed into every direction it provides on matters such as product clearance. Taking charge is Kirsten A Grüneberg, a chemical, biotech and pharmaceutical expert who provides ‘quick, straightforward but thorough advice’ and ‘achieves the maximum scope of protection in the most efficient way’. …Grüneberg has hired astutely, too, selecting individuals with in-house experience, international expertise and technical fluency.”

Dr. Grüneberg represents many of the world’s largest chemical, biotech, and pharmaceutical companies, including US Fortune 50 and Global Fortune 200 companies, several DAX 30 companies in Germany as well as Nikkei 225 companies in Japan.

In 2021, Dr. Grüneberg was a finalist for the “Patent Strategy Attorney of the Year” LMG Life Sciences Awards in the DC Area. She has successfully defended high-value pharma patents in post-grant proceedings, helping to secure business deals worth several hundreds of millions of dollars. Dr. Grüneberg also has significant experience in Hatch-Waxman-related matters (including patent term extension, Orange Book listings, and IP-related aspects of FDA submissions) as well as IP issues in connection with mergers and acquisitions in the U.S., Germany, Switzerland, Japan, and China.

Areas of technical expertise further include polymers, automotive additives, coatings, toners, 3D-printing technology, Industry 4.0, adhesives, building materials, pharmaceuticals including small molecules and biologics, medical devices, diagnostics, drug delivery systems, speciality chemicals including pigments, catalysts, lubricants, liquid crystals, surfactants, surface modified materials, nanotechnology, semiconductors, and battery materials.

Dr. Grüneberg is active in the areas of opinions and counseling, post-grant proceedings including inter partes review and reexaminations, intellectual property portfolio management and development, chemical as well as pharmaceutical/medical devices patent prosecution. She is a native German speaker and regularly visits clients in Europe and Asia to update them about the latest developments in U.S. patent law and to work closely with them on selected high-profile projects.

Dr. Grüneberg is a contributor to the treatise entitled Post-Grant Proceedings Before the Patent Trial and Appeal Board, published by Practicing Law Institute. The treatise guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

After receiving her Ph.D. in organic chemistry, magna cum laude, from the Technische Universität Berlin in Germany, Dr. Grüneberg was awarded a Lynen-Fellowship from the Alexander von Humboldt Foundation in Germany. This fellowship was to perform research during a three-year period at the Center for Bio/Molecular Science and Engineering of the U.S. Naval Research Laboratory. She was a visiting professor at the Georgetown University Medical Center and also worked as a senior scientist at Geo-Centers, Inc./U.S. Naval Research Laboratory and as a research scientist at the Max-Planck Institute of Colloids and Interfaces in Berlin. Dr. Grüneberg received her Masters of Science in organic chemistry, summa cum laude, and her Bachelors of Science in chemistry/chemical engineering, magna cum laude, from the E.-M.-Arndt-University in Germany.

Dr. Grüneberg has published more than 50 scientific papers and conference presentations in the areas of liquid crystals, display technology, organic thin films, polymers, surfactants, and antimicrobial materials. She has been an invited speaker regarding her research at international conferences in the U.S., Japan, Germany, Italy, Switzerland, and South Korea, and is an inventor on several U.S. and foreign patents.

Dr. Richard L. Chinn, Grüneberg and Myers – Intellectual Property Law

Dr. Richard L. Chinn, Grüneberg and Myers – Intellectual Property Law

Dr. Richard Chinn is a chemical technology patent attorney with the Grüneberg and Myers law firm, bringing to the practice a wide range of experience in client counseling, patent prosecution, application preparation, patentability and infringement evaluation and litigation in chemical technologies. Dr. Chinn works with start-ups, emerging, and multinational foreign and domestic companies in industries ranging from polymer and chemical processing to biotech, semiconductor, petroleum products, alternative energy, pharmaceuticals, cosmetics and food. He also counsels universities as to their patent needs.

After understanding clients’ needs and goals, Dr. Chinn is able to provide a value driven approach, offering confidence in achieving the desired outcome. Dr. Chinn guides clients through the complexities of the U.S. patent system, advising, offering opinions and prosecuting all aspects of patent protection. He addresses issues ranging from inventorship disputes and inequitable conduct to on-sale bar restrictions. His breadth of experience allows him to see the bigger picture of clients’ issues, addressing not only the problems presented but also the broader implications and related concerns.

With an advanced degree in synthetic organic chemistry and first-hand experience from his post- doctoral fellowship researching and investigating methodologies for heterocycle synthesis, Dr. Chinn brings a deep understanding of the science underlying clients’ inventions. In addition to total synthesis and heterocycle methodologies, Dr. Chinn’s scientific expertise includes pharmaceutical agents, carbohydrates, enzymology, agricultural chemicals, biotechnology, polymer chemistry, dye stuffs, and semiconductor processing. Dr. Chinn has published numerous scientific articles in the areas of organic synthesis, mechanistic organic chemistry and heterocyclic methods.

Recognizing the benefits of direct interaction with clients, Dr. Chinn serves as the director of the firm’s trainee program.

Kiran Kang, Grüneberg and Myers – Intellectual Property Law

Kiran Kang, Grüneberg and Myers – Intellectual Property Law

Dr. Jaskiranjit (Kiran) Kang is a knowledgeable and versatile patent agent with nearly 10 years of private and corporate experience of practicing patent law. Equipped with multijurisdictional U.S. and European patent drafting and prosecution skills, Kiran has established herself in the chemical and biotechnology practice at Grüneberg & Myers (noted by Intellectual Asset Management Patent 1000 as one of the world’s leading IP firms).

She supports some of the largest chemical and biotechnology companies in the world. This often involves creative advocacy before the USPTO, which she thoroughly enjoys.

Her track record of overturning rejections into allowance is excellent. She also regularly presents on comparative aspects of U.S. and European patent law. Kiran currently serves as the North American Representative for the Chartered Institute of Patent Attorneys (CIPA) Informals Committee. She is also a part-qualified European & UK Patent Attorney.

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