PTAB Motion to Amend: A Niche within a Niche

It has been over three years since the United States Patent and Trademark Office (USPTO) introduced its Motion to Amend (MTA) Pilot Program. The Pilot Program offered patent owners an option to (1) receive Preliminary Guidance on the merits of their MTA from the Patent Trial and Appeal Board (PTAB) and (2) submit a revised MTA addressing any issues raised in the Preliminary Guidance.

MTA became a niche within an already specialized PTAB practice. MTA can be a powerful tool for patent owners to obtain claims that are “blessed” by the PTAB. To balance this advantage for patent owners, petitioners have nearly a full arsenal of invalidity tools at their disposal (Sections 101, 102, 103, and 112) to combat an MTA. Some of this would not have been otherwise available in the proceeding.  The nuances of MTA practice can catch inexperienced or unaware practitioners off-guard, which potentially adds to the costs and the attorneys’ time while altering the risk and reward analysis.

Moderator:

Kelly Hughes, Senior Patent Counsel, Unified Patents, LLC

Kelly is a Senior Patent Counsel at Unified Patents, LLC, where she supports Unified’s Patent and Trial Appeal Board (PTAB) practice, along with appellate practice as well. She was previously a patent attorney at Erise IP, focusing on patent litigations and PTAB practice. Kelly is originally from Michigan, and she received her bachelor’s degree majoring in Psychology with a minor in Biology at the University of Colorado in Denver. Kelly obtained her J.D. from the University of Colorado (Boulder).

Panelists:

Alyssa Holtslander, Senior Patent Counsel, Unified Patents, LLC

Alyssa is a Senior Patent Counsel at Unified Patents, LLC. Alyssa handles PTAB filings and ex parte reexamination within Unified, and she is also primarily responsible for UnifiedBrands, a service within Unified Patents that help deters counterfeiting.

Prior to joining Unified Patents, Alyssa was an attorney at Finnegan, LLP. She attended the George Washington University Law School, where she earned her J.D. Alyssa holds a Bachelor of Science in Mechanical Engineering from Penn State University.

Jessica Kaiser, Partner, Arnold Porter Kay Scholer LLP

Jessica Kaiser resolves complex intellectual property disputes for established and emerging companies in the technology, telecommunications, and life sciences sectors. With nearly two decades of experience divided between the bench and the bar—including as a former Lead Administrative Patent Judge (LAPJ) at the United States Patent and Trademark Office (USPTO) and a partner at an international law firm—Ms. Kaiser combines patent trial and appellate experience, judicial acumen, and technical knowledge of Patent Trial and Appeal Board (PTAB) practice to benefit clients involved with patent litigation, America Invents Act (AIA) trials, and ex parte appeals in the nation’s most significant patent jurisdictions.

As a LAPJ at the USPTO, Ms. Kaiser managed and decided numerous cases before the PTAB in AIA trials (both inter partes reviews and post-grant reviews) and ex parte appeals during the original prosecution of patents. She also worked closely with USPTO and PTAB leadership in developing and implementing PTAB reforms, including agency rulemaking, a pilot program for motions to amend patent claims during AIA trials, PTAB statistics, and remote hearing operations. Prior to joining the USPTO, Ms. Kaiser was a staff attorney in the Office of General Counsel at the US Court of Appeals for the Federal Circuit, where she provided legal advice to the court, including on mandamus petitions and all types of motions filed prior to an appeal being assigned to a merits panel.

Before her time in public service, Ms. Kaiser was a partner in an AmLaw 100 firm, and she managed teams of attorneys and legal professionals to lead clients spanning multiple industries (including pharmaceuticals, consumer electronics, computer software, smartphones, medical devices, fluid metering, and telecommunications) through all aspects of their patent litigation, from pre-filing investigation through appeal.

Ms. Kaiser earned her JD from Chicago-Kent College of Law, Illinois Institute of Technology, where she was a Chicago-Kent Honors Scholar (full-tuition academic merit scholarship plus stipend), a ten-time CALI Award recipient for achieving the highest grade in ten courses, and an executive articles editor on the Chicago-Kent Law Review. She received her BS in Metallurgical and Materials Engineering from the Colorado School of Mines.

Kevin McNish, Managing Member, McNish, PLLC

A registered patent attorney, Kevin McNish represents clients in inter partes reviews (IPRs), post-grant reviews (PGRs), ex parte reexaminations, and other proceedings in the United States Patent and Trademark Office. With first-chair experience spanning more than 90 IPRs and other Patent Trial and Appeal Board proceedings, he has been repeatedly recognized as one of the most prolific and effective PTAB practitioners in the United States. Across those proceedings, he has drafted petitions and responsive briefs; taken and defended expert depositions; and argued at oral hearings. He also maintains an active appellate practice before the U.S. Court of Appeals for the Federal Circuit, where he has both briefed and argued appeals of PTAB proceedings.

Outside of his work for McNish PLLC, Kevin is a committed member of the PTAB Bar Association, where he serves as a Vice Chair of the Technology Committee and the District Court Desk Editor for the biweekly PTAB Roundup newsletter. He regularly speaks about practice before the PTAB and Federal Circuit and has spoken at national events hosted by the PTAB Bar Association and the Practising Law Institute (PLI).