Leadership

Directors and Officers

President David Higer (Wick Phillips)

The PTAB is an indispensable part of the U.S. patent system.  The PTAB Bar Association was formed with the goals of being the collaborative, congenial, inclusive, highly professional and community-centric Association dedicated to being a voice for all PTAB stakeholders.  The Association’s leadership has always kept these goals at the heart of all their decisions. I’m proud to practice before the PTAB and to be associated with such a great group of world class patent practitioners, leaders and, most importantly, people.

President-Elect Teresa Stanek Rea (Crowell & Moring LLP)

The PTAB and Outreach

The America Invents Act may have taken at least seven years to come to fruition but it was worth the wait. The success of the AIA is best demonstrated by the popularity of the new trial proceedings before the PTAB. These new proceedings are now a mainstay of every litigators armamentarium. Their significance and value are appreciated by most practitioners in the United States but it is worthwhile to note that our international colleagues are immersed in the nuances of these proceedings as well. Many patent disputes can now be handled more efficiently, quickly and cost-effectively. We have the PTO to thank for getting everything up and running so quickly and for reaching out to our community as things progressed. The PTO remains flexible and continues to revise the rules as the need arises. That outreach is important and will be enhanced by the creation of our new bar association.

Vice President  Monica Grewal (WilmerHale)


Treasurer Gene Lee (Perkins Coie)


PTAB work is an interesting and dynamic part of patent practice.  PTAB trials are critically important to petitioners and patent owners, with implications for patent litigation, prosecution, and transactions.  The PTAB Bar Association is the premier professional organization related to PTAB work.  As a Director, I hope to play an active role in helping the Association shape PTAB practice in the future as it continues to evolve.

Secretary Li-Hsien (Lily) Rin-Laures (RinLaures LLC)

In just a few short years, the PTAB has become an important venue for patent challenges.  Over 9000 IPRs have been filed since its inception.  Appeals from the USPTO, which formed only 16% of the Federal Circuits docket in FY2014, represent about 47% of the courts docket in the first half of FY2019.  Nowadays, IP strategy must constantly consider the possibility of initiating or defending against PTAB challenges and the potential impact on prosecution, licensing and litigation.  Even through the lens of my past experience with other inter partes proceedings such as interferences and oppositions, it requires vigilance to keep up with evolving PTAB practice as it is shaped by a growing body of Federal Circuit and Supreme Court precedent, agency decisions and guidelines.  Its an exciting and fun time, and the PTAB Bar Association offers an incredible community of practitioners, in-house counsel, and judges to foster a dynamic dialogue that informs us all and helps shape the future.


Non-Officer Board Members

Michael Babbitt (Willkie Farr & Gallagher LLP)

The PTAB Bar Association is the premier organization for thought leaders of the PTAB.  We have done exciting work to help shape PTAB policy with the PTAB leadership, judges, practitioners, clients, and stakeholders.  I have been involved for years in the PTAB Bar Association leadership, and I believe our annual conferences, comments on proposed rulemaking, amicus briefs, meetings, and publications have an important role in the PTAB community.  My practice focuses on complex patent litigation, PTAB proceedings, and disputes involving electrical and mechanical technologies, and I hope to add to the diversity of thought on the PTAB Bar Association Board of Directors in the upcoming years.

Andrew Baluch (Smith Baluch LLP)

Having seen firsthand the America Invents Act as it was being negotiated and enacted while I served as a special advisor in the USPTO and White House IPEC, it is gratifying to see today the popularity and success of inter partes reviews (IPRs), especially as compared to the now-expired inter partes reexamination procedures that IPRs replaced.  Of course, no legislative and regulatory effort of the AIA’s size can ever be perfect, or achieve exactly the right balance, immediately upon enactment.  That is why it is encouraging to see continuous refinements being made to IPR procedures, with input from the Association, via notice-and-comment rulemaking, amicus briefing, congressional oversight, and possible legislative reforms.  The goal is, and should continue to be, striking the delicate balance, as the Supreme Court put it, between protecting patentable inventions on the one hand, and protecting the public’s ability, on the other, to pursue innovations, creations, and new ideas beyond the inventor’s exclusive rights.

Courtenay Brinckerhoff (Foley & Lardner)

While a lot of attention is paid to AIA patent trials, the bulk of my PTAB practice involves representing clients in ex parte appeals from examiner rejections. The 60-70% affirmance rate and authority of the administrative patent judges to enter new grounds of rejection can make appearing before the PTAB a challenging undertaking, but we all share the same goal of strengthening the U.S. patent system through the grant of valid patents. Advocates for applicants can do their part by creating a strong record for appeal, focusing on controlling issues, and presenting their arguments clearly and succinctly, and administrative patent judges can do their part by taking an unbiased, fresh look at the record. The PTAB Bar Association provides a unique opportunity to work with USPTO and PTAB leadership to further these goals from all perspectives.

David Cavanaugh (WilmerHale)

Dave is the Chair of the Post Grant Proceedings Group at WilmerHale.  He has been active in Post Grant proceedings at the US Patent Office and has filed petitions and represented patent owners in a variety of technologies and has been lead counsel or counsel of record on several hundred IPR proceedings.  The Post Grant Proceeding procedures provided by the America Invents Act (AIA) provide an opportunity for the PTO to give a second look at a patent by a group of technically trained judges who understand the intersection of intellectual property law and technology.  Dave has led Patent Owners to successful completion of IPR proceedings recognizing the importance of careful attention to the prior art and the challenged claims.  He has also developed strategies for both Patent Owners and Petitioners for using IPRs as a vehicle toward settlement of related district court cases as well as developed strategies for joinder of parties.  Along with IPRs, Dave routinely develops and implements strategies for other post-grant proceedings such as ex parte reexaminations, reissues and for ex parte Appeals.

Joshua Goldberg (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)

PTAB practice has come a long way since the PTAB was created by the AIA.  And so has the PTAB Bar Association.  We have become the premier organization for dialogue between the bar community, the PTAB, and other stakeholders.  I focus my practice almost exclusively on PTAB proceedings, and like many others, I enjoy the Association‘s programming and the opportunities it has provided me to meet, get to know, and work with others in the bar.  I‘m proud to have been involved with the Association since the beginning and look forward to helping shape its future.

Deborah Herzfeld  (McNeill Baur PLLC)


Scott Jarratt (Haynes and Boone LLP)

David W. O'Brien (Haynes and Boone, LLP)

While it seems like just yesterday that provisions of the America Invents Act became effective, the PTAB trial proceedings established by the AIA have quickly become the threshold adjudication in many patent disputes.  As a result, PTAB trials and PTAB practice are now critically important to both patent owners and accused infringers.  The stakes for litigants can be incredibly high, but the legal, procedural and technological expertise of PTAB judges and the professionalism of the bar have contributed greatly to the overall quality of adjudication of validity issues in our patent system.  The PTAB Bar Association brings together practitioners representing different interests, roles and perspectives, but strives to be an advocate for the proceedings themselves and for the just, speedy, and efficient resolution of all proceedings brought before the PTAB.  It has been an exciting first decade for the practice, and PTAB Bar Association will continue to be at the vibrant center of thought leadership for years to come.

Pauline Pelletier (Sterne, Kessler, Goldstein & Fox P.L.L.C.)

Pauline M. Pelletier is a director in Sterne Kessler’s Trial & Appellate Practice Group. She is experienced in litigating intellectual property disputes in federal court, before the U.S. International Trade Commission, and in trials, interferences, and reexaminations before the U.S. Patent and Trademark Office. She has represented clients in dozens of post-grant proceedings before PTAB and related appeals.

Megan F. Raymond (Paul, Weiss, Rifkind, Wharton & Garrison LLP)

When it comes to the PTAB, remember your audience and the nature of PTAB practice.  First, the PTAB judges are substantively knowledgeable and have little-to-no help in the form of law clerks.  Assume that they will catch technical shortcomings, but understand that breaking down the analysis piece by piece so that it is readily understood makes for good advocacy.  Second, as PTAB practitioners, we appear before the same judges and across from the same counsel repeatedly.  With respect to the judges, credibility is key.  With respect to counsel, be reasonable and play nicely.  You may find yourself on the other side of the same ask with the same counsel in the future.  As a member of the PTAB Bar Association board, I look forward to supporting and building collegiality amongst members of the PTAB Bar, and have a particular interest in building participation by women in PTAB proceedings.  

Deborah Yellin (Crowell & Moring LLP)

PTAB practice provides the best of both worlds between patent prosecution and litigation.  Every PTAB judge has a technical background. Attorneys arguing before the board must have a thorough understanding of the technology involved in a patent as well as strong grasp of the case record.  I began my career in patent prosecution and counseling, including ex parte appeals.  Following the passage of the America Invents Act, I branched out into PTAB trials. I found this transition to be exhilarating, intellectually stimulating and fulfilling, and helped me provide further value to my prosecution clients.  I highly encourage patent prosecutors to join the PTAB Bar Association,  not only to enhance their prosecution and ex parte appeal practice, but to consider including PTAB trials in their practice as well. 

Daniel Zeilberger (Paul Hastings LLP)

Practice before the Patent Trial and Appeal Board is unique in many ways.  For one, the scope of the work can be broad, covering everything from appeals of examiner rejections in patent applications that may cover important innovations; to derivation proceedings where disputes about invention are resolved; to inter partes review and post grant review proceedings where patentability issues are considered.  For another, the work can involve many unique and cutting-edge aspects of the law, including not just patent law—of which there are bountiful issues—but also various other issues touching on, for example, important aspects of administrative and constitutional law.  And for yet another, the stakeholders are varied and can have many different interests and perspectives.  The PTAB Bar Association thus serves an important role in helping to address, and foster conversations about, the many PTAB-related issues that arise every year.  It is an honor to serve as a Director and help work towards the Association‘s goals.

Past Presidents

Immediate President W. Karl Renner (Fish & Richardson P.C.)

Practice before the PTAB has provided many practitioners, including myself, an incredible outlet to bring value to our clients, and to have fun doing so. In fact, one of the best attributes of PTAB practice is the opportunity for patent prosecutors and litigators to work more closely together. While these two groups live homogenously within the walls of our firm, this practice allows us to come together across the industry. As for the PTAB Bar Association, I am honored to work shoulder-to-shoulder with colleagues around the nation and the globe to bring this off the ground, and I am excited by the prospects of what we can accomplish as we continue to work together to create a useful resource for industry and the PTAB!


Past President J. Steven Baughman (Paul, Weiss, Rifkind, Wharton & Garrison LLP)

As important as it is to know your audience at the Board (three technically-savvy judges with tough questions), it can also be critically important to know your stage. The PTAB's hearing rooms, whether in Alexandria or a satellite location, vary widely, and this can lead to unpleasant surprises for the unwary. Perhaps the most obvious challenge is one of space: in a multi-petitioner dispute, for example, Alexandria courtrooms other than A are unlikely to have enough room for all of the attorneys, let alone a representative from each party. And even within the available space, revamped technology has shifted some prior layouts and logistics practitioners have come to count on (in A, for example, there is no longer a shelf waiting under the podium for your papers and binders, and a new projector interface makes computer placement tricky if you don't have a long extension cable at the ready). So for your next trip to the PTAB, bear in mind that knowing your room, as well as your case, can help smooth out what might otherwise be an awkward visit.

Naveen Modi (Paul Hastings LLP)

This may sound basic, but do not play games with your opponent and be courteous and reasonable (e.g., with requests for extension). As one example, I was involved in an IPR where the other side submitted an English-language declaration, but insisted that the deposition be conducted in a foreign language right before the deposition started. This was the first time the other side made us aware of this issue and asked us to use an interpreter they had on-site. When we indicated that we would need our own interpreter as provided for by the rules and needed time to secure one, they insisted that we use their interpreter. We ended up having a call with the PTAB during which the judges ordered that the deposition be rescheduled for another day with proper interpreters and made the other side pay for certain costs for having to reschedule the deposition.

Erika Arner (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)

PTAB trial practice is a bit like the Wild West. When Congress gave us this brand new law, we all became pioneers trying to figure out how it should work. Nearly every proceeding involves something that is not specifically addressed in the statute or rules, providing opportunities to be creative and collaborate with the Board and sometimes even opposing counsel to shape the practice. In one case, we proposed a new type of motion to the Board, and the panel promptly asked us to file a short memo explaining how this new procedure should work under the statutory provisions. More recently, the Federal Circuit and Supreme Court have taken an interest in the nuances of PTAB trial practice. In one particularly fun argument, Judges Newman and Prost spent nearly 20 minutes questioning us about how motions to amend really work, and now the en banc Court will be taking up that issue. So much more to explore!

Bob Steinberg (Latham & Watkins LLP)

Law School Doesn't Teach How to Form A Bar Association, But with the Help and Collaboration of Over 45 Law Firms, We Figured It Out.

After litigating patent cases in district court for more than 25 years, a profound shift in my practice started in 2014 as I began to litigate proceedings at the PTAB. After a number of trial hearings, I noticed a few ways the process might be improved and wondered if others in the legal community had similar concerns and experiences. To my surprise, I couldn't find a directory of PTAB practitioners or any bar association dedicated to addressing issues related solely to the PTAB. Shouldn't there be one?

On February 19th, 2016, a kick-off conference call occurred with a handful of PTAB practitioners to explore whether they felt similarly. They did. Our first action was the creation of an organizational charter to provide a unified voice for all stakeholders to participate in the formation of a PTAB bar association. More than 45 law firms (and several companies) quickly signed on, and in less than seven months we launched the PTAB Bar Association.

I have been humbled by the level of commitment and effort by so many of the legal community to fulfill our mission of launching this association and making this bar association a success.