Patexia Insight 194: The Top Lateral Moves of PTAB Attorneys in 2023
The Patent Trial and Appeal Board (PTAB) holds a pivotal position within intellectual property law, wielding substantial influence over patent validity determinations and dispute resolutions. As an integral component of the United States Patent and Trademark Office (USPTO) since 2012, it serves as a key arena for resolving patent challenges and appeals through a specialized administrative process.
Comprehending the intricate dynamics of the PTAB and its evolving landscape necessitates a multifaceted approach. Patexia's notable effort in illuminating trends, patterns, and shifts within this domain comes through the PTAB Intelligence Report. This comprehensive analysis offers statistics and rankings for attorneys, firms, and companies based on their activity and success in various PTAB proceedings. These proceedings encompass Inter Partes Reviews (IPRs), Post-Grant Reviews (PGR), Covered Business Method Reviews (CBM), and derivation proceedings (DER). The seventh edition of this report was published in early September this year, and today’s article will be dedicated to shedding light on the lateral moves made by PTAB attorneys since the release of the previous edition of the report, as well as highlighting the law firms with highest growth and decline in PTAB attorneys.
To provide a comprehensive analysis that also takes into account the necessary time for proceeding terminations, the PTAB Intelligence 2023 report focuses on a specific period of study: July 1, 2018, through June 30, 2023, using the latest case updates as of August 25, 2023. This year, we've made significant advancements in our coverage, encompassing not only IPRs but also all other PTAB proceedings. Throughout the study period, a total of 7,184 PTAB proceedings were initiated, comprising 6,849 IPRs, 282 PGRs, 48 CBMs, and 5 DER proceedings. Due to their distinctive purposes, we've dedicated separate chapters in the report covering DER proceedings, aimed at establishing the rightful inventorship of claimed inventions. Similarly, we've allocated dedicated sections for CBMs since the opportunity to file new CBM petitions ceased on September 16, 2020. The remainder of the report concentrates on the two primary types of proceedings, namely IPRs and PGRs.
While IPRs challenge patent validity based on prior art, PGRs offer broader challenges, including novelty and obviousness. However, PGRs must be filed within the first nine months of a patent's issuance, potentially leading to fewer filings. The chart below covers IPR and PGR filing activities from 2018 to the first half of 2023.
In a five-year analysis of IPRs, fluctuations in proceedings from 1,287 to 1,607 annually are noted. Despite an overall decline in 2019, 2020 witnessed a surge of 12.74%, followed by relatively smaller fluctuations. The first half of 2023 indicates a 4.78% decrease in IPR petitions compared to the same period in 2022, with a notable drop in filings during the second quarter of 2023. As for PGRs, annual proceedings ranged from 35 to 83, showing fluctuations as well. There was a significant increase in 2020 but a subsequent drop in 2022 and the first half of 2023 compared to the previous year.
The full PTAB Intelligence 2023 offers a further in-depth analysis of PTAB filings at both the patent and claim levels. It encompasses details on the most challenged IPC codes and technologies by proceeding type, analyses of terminated proceedings outcomes, annual comparisons of settlement rates, FWD (Final Written Decision) rates, and denial rates, among various other critical metrics. In our previous Patexia 186, we have provided an analysis covering the significant disparities that exist in the outcomes of PGR and IPR proceedings. Additionally, this comprehensive report ranks all 992 law firms engaged in PTAB proceedings, alongside the top 1,000 attorneys and companies, based on their activity, performance, and roles as petitioners, patent owners, and overall.
In alignment with our other report series, we've allocated a distinct chapter to cover the PTAB lateral moves that have taken place since the release of our previous IPR Intelligence 2022 Report in September 2022. Covering approximately a full year, our compilation aims to enhance the significance and usefulness of this list for PTAB stakeholders analyzing the evolving landscape of legal professionals and significant shifts. We've identified individuals who underwent career changes or initiated independent ventures during this specific timeframe by comparing their current data with that from one year ago. Our examination has unveiled a total of 31 lateral moves among the top 1,000 most active PTAB attorneys over the past year. The table provided below presents a list of the top 10 PTAB attorneys who have made such transitions in the last year. We've included their overall activity ranking and the number of PTAB proceedings they've been engaged in, along with details about their previous and current firm.
| PTAB Attorney | Current Firm | Old Firm | Overall Activity Rank | PTAB Proceedings |
| Scott A. McKeown | Wolf, Greenfield & Sacks | Ropes & Gray LLP | 5 | 230 |
| Brett E. Cooper | BC Law Group, P.C. | Russ August & Kabat | 23 | 91 |
| Daniel D. Smith | Jackson Walker LLP | Fish & Richardson | 49 | 94 |
| Erik James Halverson | K&L Gates | Wilmer Cutler Pickering Hale and Dorr | 119 | 58 |
| Scott M. Border | Winston & Strawn | Sidley Austin | 173 | 63 |
| Lora M. Green | Gemini Law LLP | Wilson Sonsini Goodrich & Rosati | 187 | 49 |
| David J. Tobin | McDermott Will & Emery | Baker Botts LLP | 231 | 42 |
| Dale Chang | Russ August & Kabat | Latham & Watkins | 247 | 33 |
| Matthew C. Juren | Stephens Juren PLLC | 260 | 50 | |
| Erik B. Milch | Proskauer Rose | Cooley LLP | 273 | 46 |
Law firms continually engage in strategic planning to optimize their positions within the dynamic landscape of the PTAB market. Utilizing the previously mentioned lateral move data as a foundation, we've calculated the net gain (reflecting the number of attorneys who have either joined or left) for every firm actively involved in PTAB activities. This comprehensive analysis has allowed us to unveil insights into the shifts occurring within these firms. As illustrated in the subsequent chart, we present the top five firms that have witnessed the most significant growth or decline in the number of PTAB attorneys, shedding light on notable trends within this legal sphere.
A couple of observations:
- BC Law Group, P.C., a newly established firm, boasts a team of trial lawyers, three of whom are ranked among the top 1,000 most active PTAB litigators. Prior to founding BC Law Group, these attorneys worked at Russ August & Kabat. BC Law Group clients include Scramoge Technology Ltd., Sonrai Memory Limited, and Lionra Technologies Limited.
- Morrison & Foerster experienced expansion in the past year acquiring Durie Tangri, a litigation boutique firm. As for their PTAB practice, they welcomed two top-ranked attorneys, Adam R. Brausa and Daralyn J. Durie, into their ranks, both attorneys of Durie Tangri. The union occurred in January 2023, marking a strategic addition to Morrison & Foerster's legal team.
- Groombridge, Wu, Baughman & Stone LLP welcomed two attorneys, Jon S. Baughman and Megan F. Raymond, to their team. Both attorneys made the transition from Paul Weiss Rifkind Wharton & Garrison, bringing their expertise and experience to augment the firm's capabilities. The firm represents a diverse portfolio of clients, including Uber Technologies Inc. and 10X Genomics which showcases their reach across various sectors within the industry.
- Willkie Farr & Gallagher saw notable growth in their PTAB practice, adding two attorneys: John C. Moulder, previously associated with Arnold & Porter Kaye Scholer, and Aliza George Carrano, joining from Finnegan, Henderson, Farabow, Garrett & Dunner. Their expertise strengthens the firm's capabilities, contributing to its evolving PTAB strategy. The firm represents clients including Provisur Technologies, Netflix, and LG Electronics.
Stay tuned for further insights from the PTAB Intelligence Report in upcoming weeks, unveiling additional details about top law firms, distinguished attorneys, and further analysis of lateral moves within various other IP practice areas such as the CAFC.