Webinar Recording: The Latest PTAB Developments: New Challenges for Institution and New Risks for Patent Litigation

The Berkeley Center for Law & Technology
October.30.2020

Orrick collaborated with the Berkeley Center for Law and Technology at the University of California, Berkeley School of Law to present ‘The Latest PTAB Developments: New Challenges for Institution and New Risks for Patent Litigation.’ The webinar was recorded on October 27, 2020 and is available for viewing below.

Online Webinar Description: Discretionary denials of inter partes review petitions by the Patent Trial and Appeal Board have risen sharply, and the PTAB’s precedent on discretionary denials is evolving rapidly. Discretionary denials, along with the Supreme Court’s SAS decision and recent changes to post-institution procedures, must be taken into account when deciding on an IPR strategy.

This webinar covers the latest developments in discretionary denials, including the interplay between the PTAB and district courts, along with developments in post-institution practice. The panelists provide insights into how to balance competing considerations affecting the chances of success in IPRs, discuss how changes in PTAB practice are affecting IPR cost and predictability, and highlight recent indications that further changes from PTO rule-making or the courts may be on the way.

Jason Lang and Vann Pearce, Orrick partners, speak alongside Professor Robert Merges of the Berkeley School of Law and Nathan Zhang, Director, Global Litigation and Investigations at Applied Materials.

CLE INFORMATION: This course is eligible for New York and California CLE credit. Please complete and retain the applicable form for your records. The New York self-study affirmation must also be emailed to Melissa Woods ([email protected]) and Jane Gracey ([email protected]). The California self-study form does not need to be emailed to Melissa Woods and Jane Gracey.

Orrick, Herrington & Sutcliffe LLP is an accredited MCLE provider in the State of New York. This transitional and non-transitional continuing legal education course has been approved in accordance with the requirements of the Continuing Legal Education Board for a maximum of 1 credit hours, of which 1 credit hours can be applied toward the areas of professional practice requirement.

Orrick, Herrington & Sutcliffe LLP is an accredited MCLE provider in the State of California. This continuing legal education course has been approved in accordance with the requirements of the State Bar of California for a maximum of 1 credit hour, of which 1 credit hour can be applied to the general requirement.

Related Lawyers

Jason Lang Partner, Intellectual Property

Silicon Valley

See my bio

D:+1 650 614 7427
E: [email protected]

Practice:

Technology & Innovation Sector
Intellectual Property

vCard

See full bio

Jason Lang Partner

Silicon Valley

Mr. Lang has litigated cases before district courts, state courts, and the International Trade Commission. He has an extensive practice in patent office proceedings, including ex parte reexaminations and inter partes reviews. He has been a top-filer in inter partes reviews. Recent matters include work with memories (DRAM, Flash and hard drives), semiconductor tools, semiconductor packaging, and design software.

His counseling work includes developing defensive and offensive intellectual property strategies in view of potential competitor litigation. He also assists clients in indemnity disputes, product launches, patent acquisition, licensing and portfolio management.

Before focusing on intellectual property litigation and counseling, Mr. Lang spent a year working for the District Attorney’s Office in Atlanta, Georgia, where he had considerable exposure to numerous trials.

Mr. Lang’s public service commitments include steady work for housing clinics. Mr. Lang recently first-chaired a four-day trial, led a successful mediation, and obtained a favorable settlement for clients of different local clinics.

T. Vann Pearce, Jr. Partner, Patents, 3D Printing

Washington, D.C.

See my bio

D:+1 202 339 8696
E: [email protected]

Practice:

Technology & Innovation Sector
Patents
3D Printing
Intellectual Property
U.S. International Trade Commission
Inter Partes Review (IPR)
Automotive Technology & Mobility

vCard

See full bio

T. Vann Pearce, Jr. Partner

Washington, D.C.

Vann litigates in forums throughout the country. He has won several inter partes review proceedings before the Patent Trial and Appeal Board. He has secured favorable jury verdicts in Federal and state courts in Delaware, Florida, Maryland, and Texas. Multiple wins on behalf of his clients at the U.S. International Trade Commission in Section 337 investigations have earned recognition with “Disputes Deal of the Year” awards. And he has crafted winning strategies and briefs in precedent-setting Federal Circuit appeals.

A chemical engineer by training, Vann is a member of the Patent Bar. His representations involve a broad range of technology fields, including semiconductors, artificial intelligence, consumer electronics, 3D printing, automotive technologies, digital imaging, cryptocurrency, and batteries. His clients are based worldwide, including a significant portion from Japan and China. Vann frequently travels to Asia to speak on key developments in intellectual property law.

Patent infringement litigation is central to Vann’s practice, but he also has handled breach of contract, trade secret misappropriation, antitrust, tortious interference, false advertising, civil theft, and bankruptcy matters. Many of his matters involve a complex mix of claims and counterclaims across legal disciplines, where he employs his strategic judgment to navigate competing risks.

While his practice focuses on litigation and dispute resolution, Vann also advices clients on patent licensing, portfolio development, and intellectual property due diligence. Vann co-founded Orrick’s cross-practice 3D printing initiative.

Vann has served the Firm in key leadership roles. In 2022-2023, Vann served as the Chief Practice Officer for the firm's IP & Litigation Business Units, which comprise nearly 400 attorneys globally. His responsibilities included oversight of the units' financial performance, business planning and execution, and lawyer recruiting. Vann also previously served as the firm’s U.S. Law School Hiring Partner, overseeing entry-level hiring nationwide.