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Live Date: September 20, 9:30-10:30am CT

Virtual Date: September 29, 11:00am-12:00pm ET

Location: Live & Virtual

Details: On September 20, 2021 Panitch Schwarze Belisario & Nadel LLP partner Erin M. Dunston will present at the Intellectual Property Owners Association Annual Meeting on ‘Discretionary Denials of IPR Petitions by the PTAB: Recent Developments, Trends, and Effective Strategies (LIVE + Virtual)’ moderated by Eric Cohen of Rimon, P.C.

The program will explore what have proven thus far to be effective strategies by patent owners and petitioners, including the choice of forum for the district court action by patent owners, and successful strategies that have been used by petitioners to avoid discretionary denials. Many stakeholders have criticized discretionary denials under the NHK/Fintiv criteria as too dependent on the district court in which the parallel case was filed. A substantial majority of IPR petitions in which the PTAB has denied institution based on those criteria have been related to cases pending in the Eastern District or Western District of Texas, where judges have set aggressive case management schedules with early trial dates. In comparison, very few PTAB discretionary denials relate to cases filed in the District of Delaware or the District of New Jersey.

The panel will:

  • Explore the substantive arguments made by the parties in the Apple v. Iancu case, as well as any decision and/or the issues on appeal of any such decision.
  • Debate whether the NHK/Fintiv criteria are fair and equitable and whether they meet the goals of the AIA to have efficient and predictable determinations of whether patents are invalid.
  • Discuss alternative criteria that might be considered by the USPTO.

Additional speakers include:

  • Ronald Cahill, Barnes & Thornburg LLP
  • Eldora Ellison, Sterne, Kessler, Goldstein & Fox, PLLC
  • Henry Hadad, Bristol-Myers Squibb Company
  • James Smith, Ecolab Inc.

Dunston’s practice entails both patent prosecution and litigation. Having conducted many patent litigations, she recognizes how every word in prosecution may eventually be analyzed by the factfinder and thus strives for efficient, law- and science-driven prosecution.

The full brochure for the program can be found at

About Panitch Schwarze Belisario & Nadel LLP – Panitch Schwarze Belisario & Nadel LLP is a boutique intellectual property law firm with offices in Philadelphia and Wilmington, Delaware. The firm’s IP law practitioners provide strategic prosecution, litigation, licensing, and counseling service relating to patents, trademarks, copyrights and trade secrets, domain names and internet issues domestically and internationally. The firm’s long-standing relationships with a network of associates worldwide enable its attorneys and advisors to provide clients with global intellectual property advice and protection.

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