Arthrex grabbed headlines, but will it actually be a useful tool for PTAB oversight? Will the USPTO Director be willing to take a hard look at PTAB decisions? And what can we expect from a new Director?

 

More on Nimalka Wickramasekera and Juan Yaquian. 

 

SPEAKERS

Wayne Stacy, Juan Yaquian, Nimalka Wickramasekera

 

Wayne Stacy  00:00

Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And today we're talking about Arthrex. And what we can expect going forward. I'm here with two attorneys from the law firm of Winston & Strawn that are both leading experts in patent litigation and PTab litigation. We have Nimalka Wickramasekera, she's a senior IP trial litigator specializing in life sciences and the medical device sector. And also we haveJuan Yaquian. He's an IP litigator specializing in PTab, litigation and PTab practice. I want to thank you both for joining us today and helping us look into the future and figure out what Arthrex may mean for us. So starting with you, Juan, I wanted to ask you, does any of this make a difference? We've been fighting about arthrex for over a year. And the Supreme Court finally gave us an answer and gave us the director review process. But the real question is, does any of it matter?

 

Juan Yaquian  01:12

No. And I think that's that was, so the short answer is probably not there, this probably isn't going to make a big difference to the way parties approach the PTab and you know, probably isn't going to make a big difference. And one of the main reasons why probably doesn't make any difference to the way parties are going to approach PTab is because most parties and most people don't believe that this, what came out of the US Supreme Court's Arthrex decision is going to result in a big difference. A big difference being seen at the end of PTab proceedings. And I think that's the view probably there's a general view that most likely one we don't really see the director probably stepping in to overturn the board and we don't see the director being too involved. And so there's quite a few reasons why we probably see they're and they're really just practical reasons. I think, you know, if you look at this, there's a ton of activity going on at the IPR, there's hundreds of PTab judges alone, just to handle the entire PTab docket. And now to expect that one director is going to be able to go through with a fine, fine, detailed review and be able to identify issues to to pick up on review, I think nobody really expects that you would be able to do that. And at the same time know, the Supreme Court doesn't really even say that, the director has to do that the director just has to have the ability to review. And so just the volume alone of what's going on at the PTab we no one really expects the director to really be stepping in and cause any major disruption to the results of the what's going on at the PTab. And we also think about the the just the social aspects of the fact that the director is dealing with colleagues. And he doesn't also want to undermine his the the administrative pen judges of the USPTO. They want to support you know, the the staff, and all these administrative judges and the detailed work they do because in the riving edit boundary This is because we have to remember that really the the director review is only going to come into place after a final written decision. And to arrive at that final written decision. These PTab  judges spent a lot of time detailed consideration to arrive at these final room decisions hearings went