Student News: Sean O’Brien ’24 Participates in Hearing Before the Patent Trial and Appeal Board

As part of his patent field placement, supervised by Patterson Thuente IP, Minnesota Law student Sean O’Brien ’24 traveled to Washington, D.C. for a hearing before the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO). O’Brien participated in the hearing through the USPTO’s Legal Experience and Advancement Program which allows patent practitioners with three or fewer substantive oral arguments in any federal tribunal to argue a case before the PTAB. He was accompanied by patent attorney Amy Salmela ’03 who helped him prepare for the hearing.

The hearing was for an appeal of the rejection of a patent application under 35 U.S.C. § 103 as being unpatentable in view of a combination of prior art references. The technology at issue relates to systems and methods for a computing device to self-defend against potentially malicious barcodes.

Sean presented several arguments against the rejection to a panel of three administrative patent judges. O’Brien highlighted distinctions between the patent application and the proposed combination of references, and also attacked the motivation to combine the references as being based exclusively on hindsight bias which goes against established patent examining procedure.

The judges asked several thoughtful questions during the hearing, ranging from questions about the technology at issue to those about the underlying legal issues on appeal. Overall, the judges appreciated Sean’s presentation of the case and detailed answers to their questions. One judge even remarked off the record that Sean did a “great job” during the hearing.

A few days later, the PTAB issued their formal opinion reversing in full the rejection of the patent application under § 103. As a result, the application will likely proceed to grant in the coming months.

“At the University of Minnesota Law School, we are proud to offer students a wide variety of options to explore intellectual property law in depth,” remarked Associate Dean for Research and Planning Thomas Cotter. “And we are grateful to firms like Patterson Thuente for partnering with us to provide students with opportunities like Sean’s. To argue a case successfully before the PTAB, while in law school, is quite an achievement.”