Q&A: Returning to Big Law After 'Once in a Career' Patent Gig

Trenton Ward, former Lead Administrative Patent Judge at the Patent Trial and Appeal Board (PTAB), recently joined Finnegan as a partner in the firm's Atlanta office. In an interview with The National Law Journal, Trenton discusses his time at the PTAB, why he joined Finnegan, and tips for attorneys practicing in front of the PTAB.

Trenton joined the Board to take on a once-in-a-career opportunity in a potential new venue for patent litigation. During his tenure, he presided over more than 250 America Invents Act (AIA) proceedings. He specifically spoke of the final written decision that he issued in U.S. Bancorp v. Retirement Capital Access Management, which was the first final written decision by the PTAB to implement the Supreme Court's guidance with respect to patent eligibility in Alice Corp. v. CLS Bank.

In discussing why he joined Finnegan, the firm's clients and presence at the PTAB were a big draw for Trenton. It was particularly important to him to find a firm where he could represent clients on both the petitioner and patent owner side, providing balance between the parties. 

For attorneys practicing in front of the PTAB, Trenton noted that when he was a judge, he appreciated counsel that had an understanding of what was important to the panel's decision with respect to patentability. He also feels that it is important for practitioners to keep in mind that the PTAB is a fluid jurisprudence.