With two leading patent litigators as their guides, Berkeley Law students are gaining a front-row view into how patents are challenged after they have been granted. Called post-grant review, the trial proceeding is the focus of the school’s Patent Litigation II course.
The groundbreaking class—apparently the nation’s first to focus on the relatively nascent Patent Trial and Appeal Board (PTAB)—is taught by Steve Carlson of Robins Kaplan and Jeff Homrig ’01 of Latham & Watkins. Both co-authored, with Berkeley Law Professor Peter Menell and others, a seminal book that judges often use to navigate patent cases.
The instructors’ goal? “To help students tackle real-world disputes in exactly the same way we do in practice—thinking through a client’s needs, working with expert witnesses, presenting to judges, all in a team setting,” Homrig says.
Students in their fall course worked on a mock challenge to an actual barcode patent asserted in more than 100 lawsuits over the past three years. They met with a Silicon Valley IP in-house counsel and expert witness, drafted petitions for the parties’ review, and made oral arguments before PTAB judges.
“It’s a great experience for the students to argue these cases in real life, and to get very direct and pointed feedback from the judges,” Carlson says.
Students also investigated patent cases before the International Trade Commission, including emerging intersections between that body and PTAB.
Makoto Tsunozaki ’19 lauds the new course, saying he gained “a better appreciation of the 12-dimensional chess that happens under the surface in an IP dispute.”