Webinar: Insights into the Two Most Popular Types of PTAB Proceedings: Appeals and Inter Partes Reviews

Patent Trial and Appeal Board (PTAB) Appeals and PTAB Inter Partes Reviews are extremely valuable proceedings for inventors, patent owners, and the patent community generally. The pre-proceeding phase and decisions you make during that time are critical. Then, your strategies and conduct during these proceedings will often lead to favorable results in the end for the client. This webinar will set forth data-driven, thoughtful and specific insights for the two most-employed proceedings at the PTAB, i.e., Appeals and Inter Partes Reviews.

Presented by the Intellectual Property Law Section

Panelists

Joseph G. Piccolo

In 1985, Joe Piccolo graduated from the University of Notre Dame with honors and received a B.S.E.E. From 1985-87, Joe worked for the General Electric Company and then went on to law school. In 1988, Joe began working in the intellectual property law field for the U.S. International Trade Commission. In 1990, Joe graduated from NYU Law School and from 1990-91, he clerked for the Honorable Alan D. Lourie at the U.S. Court of Appeals for the Federal Circuit. In 1991, Joe was admitted to the USPTO Patent Bar and the New York State Bar.

Joe then went on to practice law at the USPTO Solicitor’s Office, where he orally argued 50 Federal Circuit appeals and drafted 88 Federal Circuit briefs for the USPTO. He was also co-counsel in 66 additional Federal Circuit appeals. Joe won scores of appeals, including such significant appeals as In re Schreiber (1997 patent prosecution case cited innumerable times), In re Watts (USPTO achieving its long-sought victory on the legal doctrine of waiver), Zumbiel v. Kappos (a complicated inter partes patent reexamination appeal where Joe successfully argued both the patentability of certain claims and the unpatentability of other claims), and Shimano v. Rea (a complex inter partes patent reexamination appeal where Joe successfully defended the PTAB as to both its patentability and unpatentability determinations which centered on claim construction and written description). Joe also worked on approximately 90 district court civil actions involving the USPTO. Additionally, Joe worked on multiple Supreme Court cases, including Holmes v. Vornado (2002), MedImmune v. Genentech (2007), and SAS Institute v. Iancu (2018). While working at the USPTO, Joe received an Exceptional Career Award and a Bronze Medal Award.

In 2021, Joe became a partner at Davidson Berquist Jackson & Gowdey, where he focuses largely on PTAB Appeals. In view of his thirty-year federal government career, Joe is in a very strong position to analyze patent prosecution records to assess the viability of appealing USPTO examiner final rejection decisions to the PTAB. He can readily draft compelling appellate briefs and persuasively argue such appeals. Joe has given several presentations on the topic of PTAB Appeals. Joe also handles other types of prosecution matters

James T. Carmichael

James T. Carmichael is a former Administrative Patent Judge on the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board). Jim was employed by the U.S. Patent and Trademark Office (PTO) for eight years, including working in the electrical and computer division of the Board as an Examiner-in-Chief. Currently he represents inventors and patent challengers before the PTO in post-grant proceedings including Inter Partes Review and Reexamination. Jim regularly serves as an expert witness on PTO prosecution and post-grant procedures.

Before becoming a Judge, Jim served for five years as an Associate Solicitor of the PTO. In that capacity, he represented the agency in federal court litigation and argued more than thirty cases at the U.S. Court of Appeals for the Federal Circuit. The cases Jim handled included patentability and reexamination. He was also Coordinator of attorney discipline proceedings. Jim helped develop PTO procedures relating to the duty of disclosure as well as post-grant proceedings.

Patexia scored Jim as one of the top three most-winning attorneys in IPRs at the PTAB (out of all 3,462 attorneys representing patent owners) from 2014 to 2019, while Carmichael IP was ranked the #1 firm. Jim graduated from Yale University in 1984, and from University of Wisconsin Law School in 1987 with honors. During law school, he served as an Associate Editor of the Wisconsin Law Review.

Jim is a registered patent attorney and admitted to the bar in Washington, D.C

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