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  • Extraterritorial Liability: Spotlight After WesternGeco

    Contains 5 Component(s), Includes Credits Recorded On: 01/17/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    The case law regarding extraterritorial liability for patent infringement is extraordinarily complicated ‒ and evolving.

    Last year the Supreme Court decided WesternGeco v. ION, widening the scope of 35 U.S.C. § 271(f) by holding that once a domestic act of infringement has been proven under § 271(f)(2), damages resulting from the infringement may be recoverable regardless of where they occur in the world.

    This month the Supreme Court asked for the views of the Solicitor General regarding the cert. petition in Texas Advanced Optoelectronic Solutions v. Renesas Electronics America. That case challenges the holding inTransOcean v. Maersk, a 2010 Federal Circuit opinion that found an offer to sell was “within the United States,” even though negotiation and execution of the contract took place abroad, when the two contracting entities were U.S. companies and delivery was to be in the U.S.

    Our panel of experts will discuss how district courts have applied WesternGeco to date (including in Power Integrations v. Fairchild in the District of Delaware) and the open questions that remain. They will also analyze relevant case law at both the Supreme Court and the Federal Circuit. In addition, they will also address the challenges in litigating these issues. The cases to be discussed include:

    • Halo v. Pulse (Fed. Circ. 2014)
    • NTP v. Rim (Fed. Circ. 2005)
    • Microsoft v. AT&T (S. Ct. 2007)
    • Cardiac Pacemakers v. St. Jude Medical (Fed. Circ. 2009) and
    • Life Technologies v. Promega (S. Ct. 2017)


    • Danielle Joy Healey, Fish & Richardson, PC 
    • Prof. Timothy Holbrook, Emory University School of Law 
    • Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP

    Danielle (DJ) Healey

    Fish & Richardson, PC

    is a Senior Principal at Fish & Richardson, PC. A patent litigator,
    DJ has tried cases in the federal courts, ITC, and various arbitration venues.
    She has argued appeals before the Federal Circuit, Fourth Circuit,
    and Fifth Circuit, and has planned and executed multi-jurisdictional
    strategies involving courts and government agencies in the U.S. and Europe. She
    also serves as an arbitrator and mediator. She is the author of the recent
    article “Patent Infringement Liability
    for Extraterritorial Acts” 
    and was one of the attorneys for
    ION Geophysical in the Supreme Court.

    Timothy Holbrook

    Emory University School of Law

    is a professor at the Emory University School of Law, as well as the University’s vice provost for faculty affairs. A leading patent law scholar,
    his work has been cited in briefs before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit itself has cited his work. He is the author of “Boundaries, Extraterritoriality, and Patent Infringement Damages” as well as the forthcoming “Extraterritoriality and Proximate Cause after WesternGeco.”

    Thomas Saunders

    Wilmer Cutler Pickering Hale and Dorr, LLP

    is a partner, appellate advocate, and litigator at Wilmer Cutler Pickering Hale and Dorr LLP. His practice focuses on IP. In addition to having won several cases at the Federal Circuit, Tom argued and won Kimble v. Marvel Enterprises, Inc.,(S. Ct. 2015), a case about collection of royalties after patent expiration,and was part of the team representing Promega in Life Technologies v. Promega at both the Federal Circuit and the Supreme Court. Tom served as a clerk to the Hon. Ruth Bader Ginsburg of the U.S. Supreme Court.

  • Inequitable Conduct After Regeneron: What Litigators, Patent Prosecutors and Patent Owners Need to Know

    Contains 5 Component(s), Includes Credits Recorded On: 01/10/2019

    This webinar will discuss the significant ongoing impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision which found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators.

    A Federal Circuit decision in 2017 found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. This widened the scope of possible inequitable conduct claims, which traditionally focused only on the prosecution of the patent before the USPTO.

    Critics of the decision hoped first for an en banc rehearing by the Federal Circuit — and then that the Supreme Court would grant Regeneron’s petition for certiorari. Those hopes were dashed late last year.

    This webinar features experts who will assess Regeneron’s significant ongoing impact on litigation and patent prosecution. The panel includes a patent prosecutor who urged the Supreme Court to grant cert. to Regeneron, a leading academic expert on legal ethics and IP, and a patent litigator who represented Therasense at the en banc Federal Circuit in Therasense v. Becton Dickenson (2011), a case that raised the bar for proving inequitable conduct. The panelists will discuss:

    • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron.
    • Howmedica Osteonics v. Zimmer, in the District of New Jersey (2018), where the court granted the defendant’s motion for $13 million in attorney fees and costs in part because of plaintiff’s inequitable conduct before the USPTO
    • The relationship between materiality under Therasense, the court’s claim construction, and the prosecutor’s judgment about what is cumulative
    • Approaches that may be taken by defendants’ experts at trial
    • The reinforced imperative for patent owners who are plaintiffs to closely oversee aggressive litigation counsel


    • David Hricik, Mercer University School of Law
    • Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
    • Rohit Singla, Munger, Tolles & Olson LLP

    David Hricik

    Mercer University School of Law

    is a professor at Mercer University School of Law, where he teaches legal ethics, patent law, and federal civil procedure.  In 2012-13, he served as a law clerk to Chief Judge Randall Rader at the Federal Circuit. He also is counsel at Taylor English Duma, LLP, where represents clients in patent cases and other complex types of litigation. David has authored a treatise on ethical issues in patent litigation and co-authored a treatise on ethical issues in patent prosecution.

    Kevin Noonan

    McDonnell Boehnen Hulbert & Berghoff LLP

    is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and chair of its Biotechnology & Pharmaceuticals Practice Group. A Ph.D. in molecular biology, Kevin’s practice involves all aspects of patent prosecution and litigation. He is a founding author of the Patent Docs blog. Kevin authored an amicus brief in favor of Regeneron’s petition for certiorari to the U.S. Supreme Court.

    Rohit Singla

    Munger, Tolles & Olson LLP

    is a litigation partner at Munger, Tolles & Olson LLP who focuses on antitrust and IP disputes in high tech industries. Rohit clerked for Judge Alfred Goodwin of the U.S. Court of Appeals for the Ninth Circuit. He has argued cases in the Ninth, Eleventh, and Federal Circuits. As lead appellate counsel for TheraSense, he persuaded the Federal Circuit to accept TheraSense v. Becton Dickinson for en banc review.

  • International Post Grant Practice: Strategic Considerations Before the USPTO, EPO and CNIPA

    Contains 5 Component(s), Includes Credits Recorded On: 01/03/2019

    This webinar will highlight the differences and similarities in post-grant practice in front of three leading patent authorities, as well as strategies that can lead to global settlement in licensing negotiations.

    This webinar will highlight the differences and similarities in post-grant practice in front of three leading patent authorities, as well as strategies that can lead to global settlement in licensing negotiations.  It will also review effective defensive strategies for patent owners, both in patent drafting and in litigation.  With U.S. inter partes reviews (IPRs) and post-grant reviews (PGRs) under the AIA, U.S. post-grant practice has joined European Patent Office opposition as a key component of global IP strategy.  Meanwhile, interest in China as a venue for patent litigation continues to grow.

    Coordinating post-grant challenges overseas effectively requires a detailed understanding of the variations between systems.  For instance, some have noted that in Europe and China, opposition can be used with little risk as a testing ground for the presentation of arguments that could be used in litigation.  But a substantial limitation of an EPO opposition is that it must be filed within 6 months of a patent being granted.  By contrast, in China, a petition to invalidate a patent can be brought at any time after grant. 

    Our expert panel includes an in-house counsel who oversees post-grant challenges at a U.S. technology company, a European patent attorney who often practices before the EPO, and a Chinese patent attorney with varied experience before SIPO (now known as the China National Intellectual Property Administration or “CNIPA”).  They will discuss:

    • Considerations in deciding where to bring an overseas challenge ‒ and in what order proceedings should be brought
    • Monitoring competitors’ patent issuance, internal product launch considerations, and the desire for freedom to operate
    • The potential ramifications of translation errors in Chinese patents
    • The impact of shrinking patent pendency at the EPO
    • Specific techniques for strengthening patents against post-grant challenges in each jurisdiction


    • Stephen Bauer, Medtronic Inc.
    • James Denness, Abel & Imray
    • Toby Mak, Tee & Howe Intellectual Property Attorneys

    Stephen Bauer

    Medtronic, Inc.

    is Senior Director of IP at Medtronic, where he has taken on growing responsibilities over 18 years.  In his present role, Steve is responsible for international IP and a range of strategic projects and initiatives.  Steve has closely managed numerous European oppositions and, as a member of a small team, has been involved with numerous IPR petitions, as well as preparation for oral arguments.  Previously, he worked at 3M.  Steve is co-chair of IPO’s International Patent Law & Trade committee.

    James Denness

    Abel & Imray

    is a partner at Abel & Imray, an IP law firm based in the United Kingdom, where he leads the oppositions practice group. He is very experienced in patent prosecution work in the European Patent Office, in the U.K., and overseas. Jim has a significant case load of opposition and appeals work at the EPO, including cases involving related litigation in national courts. Jim holds a Ph.D. in Chemistry and is a member of IPO’s European Practice Committee.  He worked with senior EPO staff to present a workshop on opposition procedure at the 2017 IPO-EPO day.

    Toby Mak

    Tee & Howe Intellectual Property Attorneys

    is a patent attorney at the Beijing-based IP law firm Tee & Howe.  He has substantial experience in both contentious and non-contentious matters, including those relating to prosecution, invalidation, and enforcement.  He is one of the authors of "Patent Law in Greater China," published with the EPO. He has a Ph.D. in Chemistry and has served many clients in different technical fields including power tools, semiconductors, adhesives, and video-on-demand. He is a member of IPO’s Asian Practice committee.

  • Diversity and Implicit Bias: How Barriers Can Be Broken Down?

    Contains 4 Component(s), Includes Credits Recorded On: 12/18/2018

    This webinar is hosted by IPO’s Women in IP Committee on diversity and implicit bias. Implicit bias in the workplace can be a barrier that not only prevents people from working together effectively, but also damages the development of inclusive relationships that foster creative and innovative ideas

    Bias is a prejudice all human beings possess. This prejudice is in favor of or against one thing, person, or group compared with another, usually in a way that is considered to be unfair.

    Implicit bias in the workplace can be a barrier that not only prevents people from working together effectively, but also damages the development of inclusive relationships that foster creative and innovative ideas. These barriers directly impact diversity by affecting both hiring practices and retention rates.

    The negative impact on diversity is a serious ongoing issue in the legal profession. Hard evidence supports positive economic impact of a diverse workforce within a company or any organization, including increased revenue and market share, and reduced turnover and legal costs. 

    The panelists on this webinar will discuss these issues, including:

    • How biases may be held by an individual, group, or institution
    • The consequences of bias
    • The two main types of biases - conscious bias (also known as explicit bias) and unconscious bias (also known as implicit bias)
    • How human beings naturally assign people into various social categories divided by salient and chronically accessible traits on the basis of implicit bias
    • De-biasing techniques including practical tips for legal and business professionals


    • Shruti Costales, HP Inc.
    • Andrea ("Andie") Kramer, McDermott Will & Emery LLP 
    • Bismarck Myrick, U.S. Patent and Trademark Office

    Shruti Costales

    HP Inc.

    is Patent Counsel at HP Inc. with over fifteen years of experience in patent application preparation, patent application prosecution, patent counseling, transactional matters, and litigation matters. Prior to being at HP Inc., Shruti was in private practice for about thirteen years with a mid-sized law firm and two patent boutiques. She also successfully founded and ran her own patent boutique for over six years. She is also a former patent examiner in the polymers and fuels technology areas. Shruti is Co-Chair of the Intellectual Property Owners Association’s Women in IP Committee and she is the Co-Chair of the Diversity Committee for the PTAB Bar Association

    Andrea Kramer

    McDermott Will & Emory LLP

    a partner in the international law firm McDermott Will & Emery LLP.  She has mentored thousands of women and written hundreds of articles and blog posts on gender biases.  Andie co-founded the Women’s Leadership and Mentoring Alliance (WLMA) to recruit senior women to mentor and support younger women.  She has developed a series of leadership training programs and is a frequent speaker on the issue of gender discrimination and bias.  She is the co-author, with her husband, Al Harris, of “Breaking Through Bias: Communication Techniques for Women to Succeed at Work.”  Their second book, “It’s Not Us, It’s the Workplace: Overcoming Women v. Women Conflict and the Bias that Built It” is due out in the fall of 2019. 

    Bismarck Myrick

    U.S. Patent & Trademark Office

    became the Director of the Office of Equal Employment Opportunity and Diversity at the U.S. Patent and Trademark Office in July 2008.  From 2003 to 2008, Mr. Myrick was the Deputy Director of that Office.  Prior to joining the USPTO, Mr. Myrick worked as an appellate review attorney in Office of Federal Operations at the U.S. Equal Employment Opportunity Commission from 1999 to 2003.  Prior to working at the EEOC, Mr. Myrick worked as a trial attorney for the City of Baltimore, Maryland.  Mr. Myrick is member of the Senior Executive Service.

  • Enforcing Patents: Global Strategies and Tactics

    Contains 5 Component(s), Includes Credits Recorded On: 12/13/2018

    learn about patent owners with international patent portfolios who have decided to litigate in other countries which they see as more patent friendly, instead of, or in addition to, pursuing litigation the U.S.

    Considering the invalidation risk of AIA post-grant proceedings, the uncertainty about patent eligibility after the Alice and Mayo U.S. Supreme Court decisions, as well as the difficulty in getting an injunction after eBay, many experts have concluded that successfully enforcing a patent in the U.S. is a much harder task than it was a dozen years ago.

    Some patent owners with international patent portfolios have decided to litigate in other countries which they see as more patent friendly, instead of, or in addition to, pursuing litigation the U.S. This shift has seemingly contributed to a documented spike in patent cases filed in EU countries, most of them in Germany. 

    This webinar features a U.S.-based IP executive who has carried out a successful patent enforcement campaign in Europe, a litigator based in Silicon Valley with experience in European courts on behalf of U.S. clients, and a leading German patent litigator with many multinational clients. Drawing on their first-hand experiences, they will discuss:

    • The decisions necessary before launching foreign litigation
    • Important differences between legal systems
    • Using foreign litigation to encourage global settlement
    • The reality of what it takes to enforce an injunction in Germany
    • Whether European decisions make any impact on U.S. courts
    • The risk that foreign litigation could backfire in the U.S.


    Steven Carlson, Robins Kaplan LLP
    Johannes Heselberger, Bardehle Pagenberg Partnerschaft MbB
    Boris Teksler, Conversant Intellectual Property Management

    Steven Carlson

    Robins Kaplan LLP

    is a partner at Robins Kaplan. An IP litigator, Steve draws upon national and international experience to assist clients with patent disputes involving many technologies. He is the co-author of “Patents in Germany and Europe: Procurement, Enforcement and Defense” and a co-author of the “Patent Case Management Judicial Guide,” a publication of the Federal Judicial Center that is distributed as a resource to U.S. federal judges.

    Johannes Heselberger

    Bardehle Pagenberg Partnerschaft MbB

    is co-head of the Patent Litigation Group at Bardehle Pagenberg, a Munich-based firm. He leads patent infringement and validity litigations, including opposition and appeal proceedings before the German Patent and Trademark Office and the European Patent Office, as well as nullity proceedings before German courts. Johannes has successfully conducted patent infringement proceedings across national borders for clients who are world leaders in their fields of technology.

    Boris Teksler

    Conversant Intellectual Property Management Inc.

    is president, CEO, and a director of Conversant Intellectual Property Management, an IP management and licensing company specializing in semiconductors and communications. Before joining Conversant, Boris was CEO of Unwired Planet, where he launched a successful litigation campaign in the U.K. and Germany. Previously, he was senior executive vice president and president of the technology business group at Technicolor, and head of patent licensing and strategy for Apple. He spent 16 years at Hewlett-Packard.

  • FRAND: The Latest Developments and Predicting the Future SEP Landscape

    Contains 5 Component(s), Includes Credits Recorded On: 12/06/2018

    This webinar will balance between patent owners and implementers discuss the evolving jurisprudence surrounding standard essential patents (SEPs) in the U.S. and elsewhere.

    In recent months, case law is continuing to develop in the evolving jurisprudence surrounding standard essential patents (SEPs) in the U.S. and elsewhere.

    In November, the U.S. District Court for the Northern District of California issued an order granting in part the FTC’s bid for summary judgment in its unfair competition case involving Qualcomm. The order addressed the issue of whether, under industry agreements to license SEPs at rates that are fair, reasonable, and nondiscriminatory (FRAND), Qualcomm had to license its essential patents to competing modem chip suppliers.

    Unwired Planet International Ltd. v. Huawei Technologies Co. Ltd. is another decision some experts view as having wide implications.  In October, the Court of Appeal of England and Wales issued its much-anticipated ruling, finding Huawei may be barred from selling its smartphones in the U.K. if it refuses to pay a global license fee for Unwired Planet’s technology.  The Court also rejected Huawei's suggestion that the license Unwired Planet offered was not on "nondiscriminatory terms" because the royalty rate was higher than that which Unwired Planet previously agreed to with Samsung.  The judgment could impact not only the terms of future licenses, but also the way that parties negotiate licenses and make offers to SEP owners.

    Our panelists, which include lawyers who represent both SEP owners and implementers, will discuss:

    • Whether global licenses will come to dominate FRAND negotiations in the future
    • If there is any consensus emerging on how to calculate license terms that are fair, reasonable, and nondiscriminatory for SEP patents
    • The strengths and weaknesses of the differing valuation approaches of TCL and Unwired Planet 
    • The impact of the availability of injunctions for the infringement of a SEP in Europe and China on litigation strategy  


    Logan Breed, Hogan Lovells LLP
    David Djavaherian, PacTech Law
    Matteo Sabattini, Ericsson

    Logan Breed

    Hogan Lovells LLP

    is a partner at Hogan Lovells LLP who focuses on antitrust law.  He has particular experience with issues at the intersection of antitrust and intellectual property law, as well as mergers and acquisitions.

    David Djavaherian

    PacTech Law

    is the founder of PacTech Law, a firm that focuses on patent, standards, policy, and RAND licensing matters. Similar to his prior in-house work, Dave leads international patent policy efforts and international standards setting organization engagement for clients, with particular focus on RAND licensing issues and obligations.  A former Associate General Counsel at Broadcom, Dave leads SEP patent and technology licensing negotiations for clients.

    Matteo Sabattini


    Is the director of IP Policy at Ericsson. Before joining Ericsson’s policy team, Matteo served as the CTO of the Sisvel Group and CEO of Sisvel Technology, a subsidiary dedicated to technical support and R&D. In addition to defining technical strategies, Matteo established and led Sisvel’s activities in IPR policy and advocacy. Previously, he worked at Interdigital and in academia. He holds both a Ph.D. in electrical engineering and an MBA.

  • Privity at the PTAB since RPX

    Contains 5 Component(s), Includes Credits 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

    Jones Day

    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.

    Brian Murphy

    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.

    Dorothy Whelan

    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 Internationally

    Contains 5 Component(s), Includes Credits 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

    Michael McCue

    Lewis Roca Rothgerber Christie LLP

    Scott Markow

    Stanley Black & Decker, Inc.

    Marketa Trimble

    University of Las Vegas, Willam S. Boyd School of Law

  • Federal Circuit Appeals and Remands to the PTAB: Recent Lessons and a Look Ahead

    Contains 5 Component(s), Includes Credits 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

    Neal Dahiya

    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.

    Sheila Kadura

    Dell Technologies

    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.

    John O'Quinn

    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), Includes Credits 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.

    Emily Johnson

    Amgen, Inc.

    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.

    Barbara McCurdy

    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.