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Privity at the PTAB since RPXContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 11/29/2018
This webinar will analyze the case law, and the resulting changes in PTAB practice, since the Federal Circuit’s July decision in Applications in Internet Time (AIT) v. RPX.
This timely program will analyze the case law, and the resulting changes in PTAB practice, since the Federal Circuit’s July decision in Applications in Internet Time (AIT) v. RPX. That appeal from a PTAB inter partes review decision found that the PTAB took an “impermissibly shallow” look at evidence presented by the patent owner about the relationship between the petitioner and another party.
Subsequent related decisions have included two significant Federal Circuit opinions -- Worlds Inc. v. Bungie, Inc. and Western Geco v. ION -- as well as numerous relevant decisions by the PTAB, such as the denial of a petition in Arris v. ChanBond and Sirius XM Radio, Inc. v. FraunhoferGesellschaft, and the granting of additional discovery in Kashiv v. Purdue.
Our panel includes a former PTAB Administrative Patent Judge who recently returned to private practice and two highly experienced PTAB litigators. They will discuss:
- The eventual boundaries of the “clear beneficiary” test for determining real-parties-in-interest, including whether joint defense groups will be impacted
- The PTAB’s new approach to granting discovery before institution, and how this offers patent owners a not-to-be-missed opportunity
- The PTAB’s recent flexibility in sometimes allowing a petitioner to choose between naming additional RPIs to win institution or risking non-institution by contesting the need to do so
Gasper LaRosa, Jones Day
Brian Murphy, Haug Partners LLP
Dorothy Whelan, Fish & Richardson, PC
Gasper LaRosa is co-chair of Jones Day's PTAB Litigation Practice. His practice also focuses on Hatch-Waxman,
biosimilar, and other patent litigation on behalf of pharmaceutical and biotechnology companies. Among other things, he
won a motion for additional discovery into the question of whether an unnamed party should have been named as a realparty-in-interest
in an IPR, Kashiv LLC v. Purdue.
Haug Partners LLP
Brian Murphy is a partner at Haug Partners LLP. Prior to joining the firm a year ago, Brian presided over nearly 200
AIA post grant review proceedings as a Lead Administrative Patent Judge at the PTAB. Previously, in private practice,
he was a first-chair trial lawyer litigating major patent cases in the federal courts and at the International Trade
Commission. Brian is a member of IPO’s Post-Grant Patent Office Practice committee.
Fish & Richardson, PC
Dorothy Whelan is co-chair of the Post-Grant Practice Group at Fish & Richardson. She has provided the strategic
direction for well over 100 post-grant matters involving both challenging and defending patents. She also works with the
firm’s litigation teams on integrated strategies for co-pending district court litigation.
Trade Shows: IP Rights Enforcement in the U.S. and InternationallyContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 11/14/2018
This webinar will discuss how to enforce IP rights effectively at trade shows, including trademarks, trade dress, design patents, and utility patents.
Live trade shows are thriving, even in this age of digital marketing — and even for intangible products. In fact, a poll of marketing professionals at a recent leading IT trade fair for cloud computing, AI, and blockchain illustrated their strong belief that trade shows still are cost-effective at generating leads and/or increasing brand awareness.
But trade shows can also be places where IP right holders frequently discover that their IP rights are being infringed. Moreover, standing disputes can escalate, because IP owners have an opportunity to interact with alleged infringers on the exhibitors’ floor.
This webinar will give a global perspective on enforcing IP at trade shows, including trademarks, trade dress, design patents, and utility patents, as well as address the U.S. landscape related to these issues. The panel includes a law professor who has done extensive research and analysis of the remedies available worldwide for infringement at trade shows, a law firm attorney who has won a number of temporary restraining orders from U.S. courts requiring the immediate removal of infringing exhibits, and an in-house patent counsel with experience dealing with infringers and counterfeiters at trade shows. They will discuss:
- Obtaining an TRO post-eBay, now that U.S. courts may no longer presume the existence of irreparable harm in patent infringement cases
- The proper preparation before a trade show that will strengthen an IP owner’s legal case and allow rapid enforcement
- When it is necessary to alert the local U.S. Attorney and the best ways to work with law enforcement
- What kind of recourse is available at trade fairs in other countries that often host trade fairs
- The pros & cons of ADR mechanisms recently established by some trade fair organizers
- The opposite side of the coin for trade show exhibitors: What to do if a competitor files an action against your company
Lewis Roca Rothgerber Christie LLP
Stanley Black & Decker, Inc.
University of Las Vegas, Willam S. Boyd School of Law
Federal Circuit Appeals and Remands to the PTAB: Recent Lessons and a Look AheadContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 11/08/2018
This webinar discusses a review of the case law and a sophisticated discussion of strategies for affirming or reversing a PTAB decision.
In the early days of appeals to the Federal Circuit of post-grant trials under the AIA, it usually seemed quixotic to hope that effective lawyering could reverse on appeal a PTAB decision to invalidate a patent. Now, the Federal Circuit’s affirmance rate for PTAB appeals hovers at around 70%, so the success of the PTAB petitioner's appellate counsel is no longer so nearly universal.
This webinar, featuring two litigators and an in-house counsel who clerked at the Federal Circuit, will review case law and discuss strategies for affirming or reversing a PTAB decision. They will analyze and discuss:
- The decision to appeal
- Trends in remands, including what kinds of procedural grounds have been raised successfully by patent owners
- How counsel can counter arguments based on procedural oversights, including arguing harmless error
- Emerging case law regarding standing
- The expected impact on appeals of the PTAB’s switch to the BRI claim construction standard
- Steps in developing your appeal strategy
- Tactical tips for briefs and oral argument
- Michael Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
- Sheila Kadura, Dell Technologies
- John O'Quinn, Kirkland & Ellis LLP
Bristol-Myers Squibb Company
is an assistant general counsel at Bristol-Myers Squibb, handling global patent litigations as well as business development for the IP group. Prior to joining BMS in 2012, Neal was in private practice for nine years at major law firms in New York.
is senior IP litigation counsel at Dell Technologies, managing litigation at the PTAB, in district courts, and at the Federal Circuit. Previously, she worked in private practice as a patent litigator and served as a law clerk to the Honorable Arthur Gajarsa of the Federal Circuit. Sheila earned a Ph.D. in Molecular and Cellular Biology.
Kirkland & Ellis LLP
a partner at Kirkland & Ellis LLP who has argued more than two dozen appeals at the Federal Circuit, including numerous appeals of IPR decisions. In In re Warsaw Orthopedic, (Fed. Cir. 2016) he argued on behalf of the patentee, obtaining one of the early remands from the Federal Circuit to the PTAB on a finding of obviousness. In Teva v. Sandoz he helped represent Teva in reversing the Federal Circuit’s de novo standard of review for subsidiary factual findings. He served as Deputy Associate Attorney General in the U.S. Department of Justice and as a law clerk to the Honorable Antonin Scalia of the U.S. Supreme Court.
AIA Estoppel: A New Flavor of Collateral Estoppel And/Or Res Judicata?Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 10/31/2018
This webinar will explore a variety of issues from the perspective of the bench, in-house counsel, and PTAB trial practitioners.
From the passage of the The Leahy–Smith America Invents Act (AIA) to today, patent owners and petitioners alike have been concerned with the potential impact of statutory and rule-based estoppel resulting from Final Written Decisions of the Patent Trial and Appeal Board (PTAB). Presenting a webinar edition of their well-received IPO Annual Meeting session in Chicago, our panel will explore a variety of issues from the perspective of the bench, in-house counsel, and PTAB trial practitioners, including:
- What is the likely impact of AIA estoppel at the PTAB and in the district courts?
- Is Shaw still alive after SAS?
- What's the likely impact of SAS on the scope of estoppel?
- How does the Maxlinear decision change the potential scope of estoppel?
- How should the terms “skilled searcher,” “diligent search,” and “reasonably could have been expected to discover” be interpreted for estoppel purposes?
- How should non-documentary prior art be handled in a district court, even if it relates to publications used in an IPR?
- When and how should the estoppel defense be raised at the PTAB? In a district court?
- Herbert Hart III (Moderator), McAndrews, Held & Malloy, Ltd.
- Emily Johnson, Amgen, Inc.
- Barbara McCurdy, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
- Hon. James Peterson, U.S. District Court for the Western District of Wisconsin
Herbert Hart (Moderator)
McAndews, Held & Malloy, Ltd.
(moderator) is a shareholder of McAndrews Held & Malloy. He regularly litigates cases before the PTAB involving a wide range of technologies, with a
particular emphasis on life sciences and chemical technologies, representing both patent owners and petitioners. He has played a role in PTAB rulemaking as one of only six members of the IPO/AIPLA/ABA‐IPL Expert Committee on Regulations for Conducting New Post‐Grant Review/Inter Partes Review Procedures. He is a member of the IPO U.S. Post-Grant Patent Office Practice committee.
Senior Counsel, IP Litigation at Amgen. Emily oversees Amgen’s U.S.
patent litigations and post-grant proceedings before the PTAB. Before
joining Amgen, she represented clients in private practice, litigating IP
disputes in both judicial and administrative tribunals. Emily served as a clerk
for the Hon. Arthur Gajarsa at the U.S. Court of Appeals for the Federal
Circuit. Emily chairs the U.S. Post-Grant Patent Office Practice
Committee of IPO.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
partner at Finnegan. She serves as lead counsel in U.S.
district court litigation, Federal Circuit appeals, actions
before the U.S. International Trade Commission, and
proceedings before the PTAB. Barbara has led dozens of contested
proceedings before the USPTO, including patent interferences and
inter partes reviews. Barbara served as Finnegan’s managing partner
from 2010-2013 and as the firm’s chair from 2013-2016.
Hon. James Peterson
U.S. District Court for the Western District of Wisconsin
is Chief District Judge, United States District Court for the Western District of Wisconsin. Prior to joining the court in 2014, he was a shareholder at the firm of Godfrey & Kahn, with a litigation practice focused on intellectual property disputes. Before his legal career, he taught film and television history and criticism at the University of Notre Dame.
- What is the likely impact of AIA estoppel at the PTAB and in the district courts?
Design Patents in ChinaContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 10/25/2018
This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China. Experts say design patents are underutilized in China by foreign companies, to their detriment.
This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China. Experts say design patents are underutilized in China by foreign companies, to their detriment. Chinese companies certainly act as if Chinese design patents can give them an edge. More than one-third of all patent applications filed in China by domestic entities are for design patents, compared to just 10 percent of all patent applications filed in China by foreign applicants.
As many a foreign company has discovered, if it doesn’t register its designs in China, there’s a good chance a Chinese company will — and the foreign company may be forced to pay a license for use of its own design. U.S., Japanese, and Korean automakers have repeatedly accused Chinese companies of stealing their designs, only to find the accused patented the designs first in China. Last year, Apple faced a widely reported ban on sales of its iPhone 6 in China after an administrative agency found that the iPhone 6 and iPhone 6 Plus infringed on the design patent rights of a Chinese manufacturer, Shenzhen Baili. The Beijing Intellectual Property Court later revoked the ban and Apple’s sales continue unimpeded
Our panel – a leader of the USPTO’s “China team” who was previously a law-firm patent litigator, a Beijing-based lawyer who specializes in design patents, and an in-house patent counsel at a major multinational – will discuss the role of different Chinese government entities and regulators in infringement disputes. Other issues they will discuss include:
- The ramifications of China’s refusal to recognize partial designs.
- Differences between U.S. law and Chinese law with respect to protection against unauthorized use of a product protected by a design patent.
- Special concerns in patenting GUIs (graphical user interfaces).
- The interaction of utility patents and design patents in China, differences in the jurisprudence applicable to each, and whether it is possible to obtain both types of protection on one product.
- Bart Fisher, Caterpillar Inc.
- Biqing Huang, CCPIT Patent and Trademark Office
- Elaine Wu, U.S. Patent and Trademark Office
is a patent attorney at Caterpillar Inc. He works on the Caterpillar Patent Development Team handling global patent preparation and prosecution for designs. Bart previously handled patent preparation, prosecution, counseling, clearance, and agreement support for numerous business lines. He practiced with law firms prior to joining Caterpillar in 2010.
CCPIT Patent and Trademark Law Office
is an attorney at CCPIT Patent and Trademark Office in Beijing. His practice focuses on patent drafting, patent prosecution, patent reexamination, patent validity, and patent infringement litigation. Biqing also specializes in design patents, with experience in prosecution, validity, and infringement issues.
U.S. Patent and Trademark Office
is an attorney in the Office of Policy and External Affairs at the U.S. Patent and Trademark Office. In that capacity, she serves as the leader for the “China team,” a group of attorneys at the Office of Policy and External Affairs with specific expertise and knowledge about China’s patent, trademark, copyright, and enforcement systems. She previously worked as a patent litigator at Howrey.
A Surge at the PTAB? Filing and Litigation Strategy in Light of Upcoming Change to the Phillips StandardContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 10/17/2018
This webinar will discuss views how the move to Phillips at the PTAB is likely to change optimal litigation strategies going forward for both petitioners and patent owners.
The USPTO announced earlier this month that inter partes review, post-grant review, and covered business method patent proceedings will switch from the current broadest reasonable interpretation claim construction standard to the same standard used by district courts, the Phillips standard, starting on 13 November. Soon after the announcement, many experts began to predict a rush of petitioners to the Patent Trial and Appeal Board. The surge is expected because litigants may try to preserve the flexibility now allowed by differing standards in the different forums by acting to institute proceedings before the change occurs.
Our panel of three very experienced PTAB litigators will give their views how the move to Phillips at the PTAB is likely to change optimal litigation strategies going forward for both petitioners and patent owners. The issues they will discuss include:
- Will institution rates at the PTAB be changed by the switch to the Phillips standard?
- Will district court judges be less likely to grant stays now that a PTAB claim construction will be more of a true preview of a Markman finding?
- Advantages and disadvantages of delaying an IPR filing.
- The timing of PTAB and district court decisions — and the potential for collateral estoppel.
- The additional complications involved in multi-defendant litigation.
- David Cavanaugh, Wilmer Pickering Hale and Dorr, LLP
- Scott McKeown, Ropes & Gray LLP
- Michael Specht, Sterne Kessler Goldstein and Fox, PLLC
Wilmer Cutler Pickering Hale and Dorr, LLP
is a partner at WilmerHale and chair of its Post-Grant Patent Proceedings Group. He has been lead counsel or counsel of record in more than 250 inter partes review (IPR) proceedings. He develops strategies for using IPRs as a vehicle toward settlement of related district court cases, as well as strategies for joinder of parties. David was previously a senior patent counsel at Boston Scientific Corp. and a patent examiner at the USPTO.
Ropes & Gray LLP
is a partner in the IP Litigation Practice of Ropes & Gray and chair of its PTAB Group. He has handled more than 250 PTAB matters since 2012 and also focuses on related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott is author of the widely-read Patents Postgrant blog. He worked as an electrical engineer in software, telecomm and related technologies.
Sterne, Kessler, Goldstein & Fox, PLLC
co-chairs Sterne Kessler’s Patent Office Litigation Practice and is a director in its Electronics Practice Group. Mike has served as counsel in nearly 100 IPRs, CBMs, and PGRs, with more than 50 representations on behalf of petitioners, and more than 40 appearances on behalf of patent owners. His practice includes high value patent prosecution, as well as district court and ITC litigation.
Avoiding and Utilizing Prosecution History Traps: Litigation, Prosecution, and Due DiligenceContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 10/09/2018
This webinar will will look at the nature of legal traps that can lurk in prosecution history, caused both by disclaimers and amendments, and how they can snare defendants or plaintiffs in infringement litigation.
Prosecution history is sometimes overlooked when valuing a patent, but some commentators would say it’s nearly impossible to overestimate the role it can play in litigation.
This summer the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a lighting technology patent asserted by Blackbird in the District of Delaware. The Federal Circuit panel determined that the district court had erred in construing the claim term “attachment surface” in finding non-infringement. A claim amendment made during patent prosecution played prominently in the appellate court’s reasoning.
This webinar will look at the nature of legal traps that can lurk in prosecution history, caused both by disclaimers and amendments, and how they can snare defendants or plaintiffs in infringement litigation. Panelists will provide tips for patent prosecutors on how to try to avoid leaving damaging history — and for transactional lawyers on how to spot problems during due diligence that could turn the patent into a lemon for a purchaser.
It features attorneys with a wide array of experience related to these issues, including two litigators who recently won cases for their clients by exploiting prosecution history: UCB, Inc. v Yeda Research and Development Co., Ltd. and Biogen Idec, Inc. v. Glaxosmithkline LLC. Life science litigation involving broad patents can often find a patent owner boxed in by the need to meet Section 112 requirements in prosecution. But the scope of disclaimers can also be dispositive in high-tech litigation such as Avid Tech., Inc. v. Harmonic, Inc., which centered on digital data storage.
- Bryan Diner, Finnegan Henderson Farabow Garrett & Dunner LLP
- Brian Nolan, Mayer Brown LLP
- James Trainor, Fenwick & West LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
is a partner at Finnegan who practices all aspects of IP law, including strategic patent portfolio management, litigation, prosecution, opinion preparation, due diligence, and interferences in diverse technical areas. Bryan served as the managing partner of the firm’s Brussels office for six years. Strategic portfolio management and litigation counseling for European clients is an important part of Bryan’s practice.
Mayer Brown LLP
is a partner at Mayer Brown who focuses on IP litigation, counseling, and due diligence, particularly in the life sciences. Brian has experience counseling clients concerning their biological products, as well as litigating cases brought under the Hatch-Waxman statute. He was co-counsel for GlaxoSmithKline in a Federal Circuit case that turned on a prosecution disclaimer. He regularly counsel’s investment companies concerning acquisitions in which the buyer’s valuation is driven by IP assets.
Fenwick & West LLP
is a partner at Fenwick & West who concentrates his practice on patent litigation and has successfully represented clients in all phases of litigation, including as first-chair trial and appellate counsel. Jim also provides IP transactional services, ranging from technology licensing to support for M&A and project finance deals across the life sciences, high-tech, telecommunications, and transportation industries. He successfully led his client UCB, a pharmaceutical company, to a win in a case at the Federal Circuit by asserting patent prosecution estoppel.
Biosimilars in the Antitrust Spotlight: Patent Litigation and SettlementContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 10/04/2018
This webinar will discuss how the U.S. Supreme Court issued its landmark decision in FTC v. Actavis, finding that payments made by brand-name drug companies to generic manufacturers in patent settlements can raise antitrust concerns
It’s been a little over five years since the U.S. Supreme Court issued its landmark decision in FTC v. Actavis, finding that payments made by brandname drug companies to generic manufacturers in patent settlements can raise antitrust concerns. The prolific and ongoing litigation stemming from that decision is limited to date to the small-molecule drugs governed by the Hatch-Waxman regulatory scheme. Now some commentators believe that the FDA has set down a pro-competition gauntlet regarding large molecule biologic drugs governed by the BPCIA — and that the FTC is not far behind.
Up until now the economic arguments associated with pharmaceutical IP and antitrust litigation were based on the pattern of small molecule drugs, where generics usually achieve a substantial share of the market quickly with large price discounts. But the complexity and costs of developing biosimilar drugs, along with substantially different regulatory and market conditions, has already shaped a different pattern for biosimilar competition, raising new issues of which practitioners need to be aware.
Our panel – a veteran pharma litigator, an antitrust lawyer who formerly worked at the FTC and who was involved in FTC v. Actavis, and a healthcare economist and expert witness – will address these issues and look ahead and discuss:
- The likely shape of settlements in patent litigation between innovator biologic companies and biosimilar aspirants
- In light of FTC challenges to a series of contemporaneous business deals including patent settlements, the future of non-cash forms of compensation
- As multiple patents in biosimilar infringement litigation can be asserted in staggered waves over time, whether “at-risk” entry is more or less likely than for traditional generic drugs
- Nicholas Mitrokostas, Goodwin Procter, LLP
- Richard Mortimer, The Analysis Group
- Mark Perry, Baker Botts LLP
Goodwin Procter LLP
is a patent litigator and partner in Goodwin Procter’s IP Litigation group. Nick has extensive trial and PTAB experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation. He represents both innovator and challenger entities, is an editor of the Biosimilars Reference Guide, and co-leads a biosimilars blog, www.bigmoleculewatch.com.
The Analysis Group
holds a Ph.D. in economics and is managing principal of The Analysis Group. He has provided economic analyses in numerous antitrust matters involving questions of market power, pricing, and market exclusion in a variety of industries, with a focus on healthcare. He is a co-author of the recent article “The Economics of Biosimilar Drugs and New Considerations in Intellectual Property and Antitrust Litigation.”
Baker Botts LLP
is a partner in the Antitrust and Competition Practice at Baker Botts, with particular experience in e issues involving the intersection of antitrust and IP law. Mark returned to private practice after serving as Counsel to the Director of the Federal Trade Commission's Bureau of Competition from 2015 to 2016 and as an attorney in the FTC’s Health Care Division from 2010 to 2015. He was directly involved in many of the agency's most important antitrust enforcement actions involving the pharmaceutical industry, including FTC v. Actavis and FTC v. Cephalon.
The Revised PTAB Trial Practice Guide and Its Impact on Your PracticeContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 09/13/2018
This webinar will discuss the August release of revisions to the PTAB Trial Practice Guide is of major importance to both patent owners and petitioners.
The August release of revisions to the PTAB Trial Practice Guide is of major importance to both patent owners and petitioners. Our program features Lead Administrative Patent Judge Michael Tierney, who continues to play a leading role in devising the rules for proceedings under the AIA, in a discussion with two top PTAB litigators. This revision is the first major update of the Guide since its publication in August 2012.
The panelists will discuss the reasoning behind each change and explain how these revisions will impact PTAB practice.
All of the major revisions to the Guide will be addressed, including:
- The introduction of a surreply to the prior sequence of briefs
- The circumscribed role to be played by expert evidence
- The introduction of a new prehearing conference call, which some commentators predict has the potential to be as important as the main oral hearing
- Clarifications regarding motions to strike and motions to exclude
- Judge Michael Tierney, U.S. Patent and Trademark Office
- Tarek Fahmi, Ascenda Law Group
- Eliot Williams, Baker Botts LLP
Hon. Michael Tierney
U.S. Patent and Trademark Office
is a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board. He handles trial proceedings brought under the AIA, as well as chemical and electrical ex parte appeals. He continues to play a leading role in devising the rules for proceedings under the AIA.
Ascend Law Group
is a founder of Ascenda Law Group, an IP boutique based in San Jose. Tarek has acted as lead counsel in more than two hundred inter partes and covered business method patent (CBM) reviews on behalf of both petitioners and patent owners. Before starting his own firm in 2012, Tarek was a partner at what is now a large international firm. His practice spans more than two decades worth of patent portfolio development and technology licensing, as well as litigation.
Vice Chief Judge Scott Weidenfeller
U.S. Patent and Trademark Office
is Vice Chief Administrative Patent Judge of the Patent Trial and Appeal Board. He manages operational and administrative aspects of the Board, including providing guidance on legal issues and the impact of changes to internal Board procedures. He previously served as Associate Solicitor of the USPTO. His primary responsibilities included managing litigation against the USPTO involving the AIA, including challenges to PTAB post-issuance proceedings. Before joining the USPTO, he worked in private practice and served as a law clerk to the Hon. Timothy B. Dyk of the Federal Circuit.
From BRI to Phillips at the PTAB: Consequences for PracticeContains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 09/06/2018
This webinar will discuss how panelists examined dozens of litigation's in recent years where both district courts and the PTAB construed the same patents.
Most patent lawyers tend to be confident they know the difference between the two competing standards for patent claim construction -- the “broadest reasonable interpretation” (BRI) used by the USPTO in patent application examination, and the Phillips standard used by district courts. But a look at how tribunals actually apply those differing standards is enlightening. Our panelists examined dozens of litigation's in recent years where both district courts and the PTAB construed the same patents. Their timely findings provide useful insights and tactics as the PTAB is expected to switch from BRI to Phillips in post-grant proceedings this fall.
Whether the PTAB will make the change retroactive is still uncertain. The panelists will give tips on how both patent owners and petitioners should proceed in the interim. Other ramifications of the change are:
- Deciding on a proposed claim construction will require even more care, because there will no longer be an opportunity to take differing positions at the PTAB and district court, now a frequent and often successful litigation strategy
- That defendants in litigation can expect to be able to mount stronger non-infringement positions as a uniform and narrower claim interpretation makes it less likely the accused device will infringe
- The potential fallout from the PTAB adopting a standard for AIA proceedings that differs from the one used in all other USPTO proceedings, such as reexamination and reissue.
- Eric Cohen, Brinks Gilson & Lione
- Kevin Greenleaf, Dentons US LLP
- Shaun Zhang, Goldman Ismail Tomaselli Brennan & Baum LLP
Brinks Gilson & Lione
is a counsel at Brinks Gilson & Lione and is active in patent litigation in federal courts, before the U.S. International Trade Commission and the PTAB. He is vice chair of IPO’s Post-Grant Patent Office Committee.
Dentons US LLP
is a counsel at Dentons and a leader of the Post-Grant Group of its IP and Technology practice. He has handled more than 100 reexams and dozens of AIA trials. Prior to becoming a lawyer, Kevin worked as a senior component design engineer at Intel Corp. He is a member of IPO’s Post-Grant Patent Office Committee and its Section 101 Legislation Task Force.
Goldman Ismail Tomaselli Brennan & Baum LLP
is a lawyer at Goldman Ismail Tomaselli Brennan & Baum. Before entering private practice, he was a patent counsel at HP Enterprise Co.