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  • Assignor Estoppel: The Current State of the Law

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 08/30/2018

    This webinar will discuss how important recent developments regarding the common law doctrine of assignor estoppel, which prevents an inventor or patent owner who assigns a patent to another party from later challenging the validity of the patent. 

    Confusion can result if agencies and courts address similar legal issues. A case in point is the current muddle over the common law doctrine of assignor estoppel in patent litigation, where disputes over patent validity often proceed in parallel before the USPTO’s Patent Trial and Appeal Board and federal district courts. The doctrine, which prevents an inventor or patent owner who assigns a patent to another party from later challenging the validity of the patent, plays a role in a significant number of high-profile patent disputes. The Federal Circuit gives assignor estoppel a wide scope, while the PTAB has determined that assignor estoppel does not apply to AIA inter partes review (IPR) proceedings.

    It appeared as if this conflict might be resolved soon, but that possibility has seemingly evaporated. EVE-USA/Synopsys petitioned the Supreme Court for certiorari, after assignor estoppel was applied against it in its case against Mentor Graphics. The Supreme Court asked for the views of the Solicitor General on the petition. But the parties stipulated to dismissal of the case in July.

    Our panelists – two litigators both recently involved in significant cases involving assignor estoppel, as well as in-house counsel at a tech company, will discuss the fluid state of the law. The Federal Circuit in Husky Injection Molding Systems Ltd. v. Athena Automation Ltd. held that it lacked jurisdiction to review the PTAB’s determination that IPR challenges are not barred by assignor estoppel. But that decision relied on Achates, an earlier Federal Circuit decision which the Court has since overturned. The panel will also consider such corporate concerns as inventor mobility and patent sales in light of assignor estoppel.

    Speakers:

    • Mark Miller, O'Melveny & Myers LLP
    • Marshall Schmitt, Michael Best & Friedrich LLP
    • Marian Underweiser, IBM Corp.

    Mark Miller

    O'Melveny & Myers

    is a partner at O’Melveny & Myers with 35 years of experience in IP. He focuses his practice on technology-related litigation and on strategic counseling and licensing. He represented Mentor Graphics throughout its litigation with Eve-USA and was successful in preventing a validity challenge in district court with a motion for summary judgment on assignor estoppel – an issue that was affirmed by the Federal Circuit and was the subject of a petition for certiorari when the case was settled

    Marshall Schmitt

    Michael Best & Friedrich LLP

    is a partner at Michael Best & Friedrich LLP. A first-chair trial lawyer, Marshall represents clients in district court, at the PTAB, and at the Federal Circuit. Marshall represented client Athena Automation in a petition for IPR against Husky in a dispute that involved assignor estoppel —and later in a cross-appeal at the Federal Circuit.

    Marian Underweiser

    IBM Corp.

    is Senior Counsel IP Law at IBM, oversees the IP operations of IBM's research division. Prior to assuming her current role in 2016, Marian was IBM's Senior Counsel for IP Law Policy and Strategy, developing and deploying its patent portfolio strategy. She is chair of both IPO's U.S. Patent Law Committee and its Section 101 Legislative Task Force. Marian holds a Ph.D. in physics.  

  • After RPX: Privity, RPI and Estoppel in AIA-Post Grant Proceedings

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 08/23/2018

    This webinar will discuss the issues of privity, real parties in interest (RPI), and estoppel are becoming ever more important in the post-grant context

    The issues of privity, real parties in interest (RPI), and estoppel are becoming ever more important in the post-grant context. The recent Federal Circuit decision in Applications in Internet Time (AIT) v. RPX, an 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. Our panel of experts will discuss how this decision is a significant addition to the Federal Circuit’s oversight of the PTAB and what the resulting implications are for practitioners.

    They will also discuss the relationship of these issues with the time bar under Section 315(b) and the ongoing impact of the en banc Federal Circuit decision in Wi-Fi One v. Broadcom Corporation. That decision held “that time-bar determinations under §315(b) are reviewable by this court,” reversing the original Federal Circuit panel that had cited the Court’s holding in Achates that such judicial review was prohibited.


    Questions of RPI and privity are woven throughout the AIA. Its estoppel provisions involving district court and ITC litigation apply not only to entities that are directly involved in adversarial proceedings, but also to privies. Likewise, in many IPRs, questions of RPI and/or privity are not limited to the business model of defensive groups, but are also raised by common fact patterns in supplier-customer relationships, indemnities, mergers & acquisitions, and use of the same counsel.

    Our panel includes a PTAB specialist with extensive experience representing patent owners, a veteran patent litigator, and an appellate lawyer who recently represented a client at the Supreme Court in a case that changed PTAB practice. They will discuss:

    How patent owners can take advantage of RPX decision and what changes may it require in the business models of some frequent IPR petitioners
    The options for patent owners who previously lost on privity issues at the PTAB or were denied discovery
    The widely reported expectation that Wi-Fi One will file a petition for certiorari with the U.S. Supreme Court - as well as its efforts before the PTAB to raise the issue of a relationship alleged to be subject to the 315(b) time bar.

    Speakers:

    • Gregory Castanias, Jones Day
    • Craig Countryman, Fish & Richardson, PC
    • Eldora Ellison, Stern Kessler Goldstein & Fox, PLLC

    Gregory Castanias

    Jones Day

    is a partner at Jones Day and head of its Federal Circuit practice. Greg represented SAS Institute Inc. in its recent 5-4 win before the U.S. Supreme Court — an opinion which changed the ground rules for trials before the PTAB.  His experience includes 60-plus Federal Circuit arguments including many appeals from the PTAB on behalf of both patent owners and petitioners.

    Craig Countryman

    Fish & Richardson, PC

    is a litigator and principal at Fish & Richardson with extensive case-management experience in patent cases involving a range of technologies, from glaucoma drugs to computer backup software.  Craig has led the briefing in over 25 Federal Circuit and Supreme Court appeals, including a recent win at the Supreme Court for client Halo Electronics, in which the Supreme Court revised the standard for enhanced damages in patent cases.

    Eldora Ellison

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a director of Stern Kessler Goldstein & Fox, where she co-chairs the Patent Office Litigation Practice. Her firm is among the ten law firms with the highest number of representations before the PTAB. Eldora has represented clients in over 60 post-grant proceedings. Her practice also includes preparing and prosecuting patent applications and counseling on patent strategy in the life sciences. She holds a Ph.D. in biochemistry, molecular and cell Biology.

  • Protecting Big Data Inventions Globally

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 08/16/2018

    This webinar takes a global and comparative look at protecting inventions to collect, process, and make sense of big data.

    These days, many companies are asking questions that cut "across" datasets. They are looking for trends and opportunities that, absent the marriage of multiple data sources, would have otherwise gone unrecognized. The advent of cloud storage, open-source database software, and large-scale commercial processing services has drastically reduced the costs to capture, store, and analyze a new flood of data coming from sensors, devices, video/audio, networks, log files, transactional applications, web, and social media - much of it generated in real time.

    The increased focus on big data has brought with it challenging questions about how companies can protect their intellectual property. This webinar takes a global and comparative look at protecting inventions to collect, process, and make sense of big data.

    Our panelists are an in-house attorney with a U.S. company at the forefront of related developments, a European IP attorney and software expert who has spent more than a decade in managerial roles for American, Swiss, and German

    companies, and a Chinese patent prosecutor who specializes in telecommunications and software. They will discuss:


    • The decision whether to pursue patent protection or to rely on trade secrets
    • Subject-matter guidelines regarding patent eligibility in the U.S., Europe, and China
    • Limitations on functional claiming
    • How to show patent examiners in Europe that a big data invention is “technical” enough to be entitled to protection

    Speakers:

    • Paul LeBlond, Google Inc.
    • Guide Quiram, Michalski Hüttermann & Partner
    • Tiecheng Yang, Unitalen Attorneys at Law

    Paul Leblond

    Google Inc.

    is Senior Patent Counsel at Google, where he supports the advertising business on all patent issues.  He is also responsible for Google's European patent strategy, working in conjunction with other patent team members various other technologies.  Prior to joining Google seven years ago, Paul practiced at Kramer Levin and Ropes & Gray.

    Guido Quiram

    Michalski Hüttermann & Partner

    is a partner in Dusseldorf at the patent law firm of Michalski Hüttermann & Partner.  He has extensive practical experience in obtaining, enforcing, and defending technical property rights.  Admitted to practice as a German patent attorney and as a representative before the European Union Intellectual Property Office, Guido has a degree in both electrical and industrial engineering, and, before entering the world of IP, worked for more than a decade in managerial roles for technology companies in Switzerland and Germany.

    Tiecheng Yang

    Unitalen Attorneys at Law

    is a Beijing-based partner of Unitalen Attorneys At Law, a well-known Chinese IP law firm.  His practice focuses on patent prosecution, reexamination and infringement analysis in the technology fields of communication, software, image processing, and encryption.

  • CIP and Provisional Practice: Strategies, Pitfalls and Recent Litigation

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 08/09/2018

    This webinar features how issues associated with U.S. provisional and CIP patent applications continue to become more complicated. 

    The issues associated with U.S. provisional and CIP patent applications continue to become more and more complicated. In Ariosa’s fight with Illumina over prenatal testing technology, the PTAB instituted an inter partes review of the Illumina patent, finding that the Fan prior art reference, published in a patent application, created “a reasonable likelihood that [Ariosa] would prevail” in showing that all claims of the Illumina patent were anticipated. The Fan prior art reference claimed priority back to a provisional patent that had been filed seven months before Illumina’s patent. But the Board ruled that Ariosa “did not meet its burden of persuasion of demonstrating that the Fan is prior art” because “it failed to demonstrate that the claims of Fan were supported by the disclosure of the provisional in compliance with 35 U.S.C. §112."

    The Federal Circuit agreed, ruling in 2017 that a published application can count as prior art as of its provisional filing date— but only as to features actually claimed in the application. After the Federal Circuit denied rehearing and rehearing en banc this spring, Ariosa filed a petition for certiorari to the U.S. Supreme Court in July, claiming that in this decision the Federal Circuit misread the patent statute and Supreme Court precedent.

    In addition to Ariosa v. Illumina, another significant Federal Circuit opinion, Dynamic Drinkware v. National Graphics (2015), also illustrates that the use and legal standing of provisional patent applications is complex, and there arestill major unresolved issues that may lead to patent invalidation. Our expert panelists will discuss potential pitfalls associated with U.S. provisional or CIP patent applications. Problems may arise not only when there is failure to fully claim the invention, as in Ariosa, but if there is a failure to: (1) list all of the inventors in a provisional application, (2) timely assign the provisional application, or (3) properly list the applicant(s). Similarly, if the timing is not right, CIP applications are often dead on arrival and, even if done correctly, may needlessly sacrifice patent term. The panel will address PCT traps, as well as the circumstances when filing a provisional or CIP application instead of a standalone utility application can be a sound
    strategy.

    Speakers:

    • Courtenay Brinckerhoff, Foley & Lardner LLP
    • Charles Chesney, Qualcomm Inc.
    • Roland McAndrews, Bookoff McAndrews PLLC

    Courtenay Brinckerhoff

    Foley & Lardner LLP

    is a partner with Foley & Lardner in Washington, D.C. She is chair of the firm’s IP Law and Practice Committee and a member of the firm's Life Sciences Industry Team, Patent Trials Group and Appellate Practice Team, and as well as editor and primary author for Foley’s PharmaPatentsBlog. She is vice chair of IPO’s U.S. Patent Office Practice Committee and a member of its Section 101 Legislation Task Force. 

    Charles Chesney

    Qualcomm Incorporated

    is a Senior Patent Counsel at Qualcomm Inc. where he works on the 3G, 4G, and 5G patent portfolios.  Before joining Qualcomm seven years ago, he worked in private practice and for a wireless communications company.

    Roland McAndrews

    Bookoff McAndrews PLLC

    is a founding partner of Bookoff McAndrews PLLC, an IP firm in Washington, DC, where he practices patent prosecution, portfolio analysis, opinion writing, and licensing. Roland started his patent career as a patent examiner at the USPTO. He achieved his law degree at night while working full time for Finnegan, where he spent fifteen years as a partner, leaving in 2012 to co-found his current firm.

  • What's Next for Design Patent Damages? DOJ on Test Trial

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 07/26/2018

    This webinar discusses the future influence of the DOJ’s test for determining the relevant “article of manufacture” in design patent damages

    For all its eye-popping size, the $533 million award that Apple won against Samsung in a design patent infringement case

    was seen by few as legally significant. Now that the case has settled, it is an interesting time for our expert panel — an
    attorney who specializes in design patents, a damages expert, and in-house counsel at an automaker — to assess the
    current state of damages law for design patents.

    The Supreme Court in 2016 held that the relevant “article of manufacture” could be either all or part of the infringing
    product. One possible standard for determining the relevant “article of manufacture” for Section 289 purposes was
    proposed by the United States Department of Justice in an amicus brief it submitted to the Supreme Court. And that test is
    taking on a vigorous life of its own.

    This summer, Seirus will file a brief in its appeal at the Federal Circuit after it was required by a jury last year to pay $3
    million in design patent damages to Columbia. Columbia v. Seirus was the first case after Samsung v. Apple to charge a
    jury to use the DOJ’s test. The outcome of this case is thus eagerly anticipated.

    Our panelists will discuss the Federal Circuit’s options in addressing the DOJ standard. They will also discuss:

    • Other legal uncertainties left by the Supreme court, including who bears the burden of proof in the DOJ test, and whether the identity of the article of manufacture is a matter of fact to be decided by the jury
    • Strategies for patent prosecution and litigation in light of uncertainty
    • Certain areas, such as graphical user interfaces, where both innovators and implementers must take special care

    Speakers: 

    • Rick Bero, The Bero Group
    • James Dottavio, Ford Motor Company
    • Elizabeth Ferrill, Finnegan, Henderson, Farabow, Garrett & Dunner LLP

    Rick Bero

    The BERO Group

    is the founder and Managing Director of The BERO Group, and a damages and valuation consultant.  He is the chair of its IP practice and co-chair of its commercial litigation practice.  Rick is a certified public accountant (CPA) and a certified valuation analyst (CVA).  He developed the damages model for Systems Inc. in its litigation with Nordock over design patent infringement.  Rick is a member of IPO's Damages and Injunctions Committee.

    James Dottavio

    Ford

    is Senior Counsel, IP, at Ford Motor Company, and its lead lawyer on design patent issues. He also is responsible for all IP matters related to transmissions. He manages litigation, performs freedom to operate analyses to avoid disputes, and drafts and negotiates IP agreements and transactions. Jim started as an engineer at Ford, and has worked as a lawyer there for eleven years. He also worked as an IP lawyer at Owens Corning. He holds an MBA as well as a JD, and is a member of IPO’s Industrial Designs Committee

    Elizabeth Ferrill

    Finnegan, Henderson, Farabow, Garrett & Dunner LLP

    is a partner with Finnegan who focuses her practice on design patents across many industries, including prosecution, counseling, and litigation. Elizabeth counsels clients who hold design patents, as well as those accused of infringement. She has prosecuted families of design patents before the USPTO, directed prosecution in foreign countries, and argued appeals before the PTAB.  Before her legal career, she graduated from the U.S. Air Force Academy with a major in computer science and served five years on active duty. She is a vice chair of IPO’s Industrial Designs Committee.

  • An Update on the On-Sale Bar: Helsinn at the Supreme Court

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 07/19/2018

    This webinar will discuss the on-sale and public use bars in light of the U.S. Supreme Court grant of certiorari in Helsinn v. Teva in late June.

    The U.S. Supreme Court granted certiorari in Helsinn v. Teva in late June, teeing up an important question about the onsale bar under the AIA. In this particular case, which the Federal Circuit declined to rehear en banc, a patent was invalidated after the sale was partially made public: the details of the invention, an anti-nausea drug, were kept secret, but the existence of the sale was publicly disclosed.

    Our panel of experts, including a top Supreme Court advocate, in-house counsel, and a patent litigator, will review the current status quo after two significant Federal Circuit decisions in recent years on the on-sale and public use bars, Merck& CIE v. Watson Labs and The Medicines Co. v. Hospira. These decisions raised in-house  concerns about patent prosecution practices, confidentiality, and guidance to commercial teams. The panelists will also consider what questions may remain unanswered after Helsinn, such as (1) does a fully-secret sales offer count to bar a patent under section 102? and (2) even if it serves as a bar to patentability under section 102, to what extent does a secret sale count as “prior art” for obviousness purposes? They will also consider the Justices’ options in this case.

    Speakers: 

    • John Duffy, University of Virginia School of Law
    • Jennifer Johnson, DuPont
    • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto

    John Duffy

    University of Virginia

    is a professor of law at the University of Virginia and has been identified as one of the 25 most-influential people in IP law in the U.S. by The American Lawyer. In 2007, he was co-counsel for the prevailing petitioner in the Supreme Court case KSR v. Teleflex. In 2016, he was Supreme Court co-counsel again, representing the petitioner TC Heartland in an important case involving patent venue. His paper concluding that dozens of USPTO administrative judges had been unconstitutionally appointed led Congress to fix the flaw. John clerked for Judge Stephen Williams on the D.C. Circuit and for U.S. Supreme Court Justice Antonin Scalia. He is the author of Patent Law and Policy, a popular case book.

    Jennifer Johnson

    DuPont

    is Associate General Counsel for the Specialty Products Division of DowDuPont. She leads a large in-house legal team, which supports DowDuPont’s Industrial Biosciences business, and has responsibility for all commercial, litigation, and intellectual property matters. Jennifer came to DuPont in 2013 from Finnegan, where she was a partner specializing in biotech and pharmaceutical patent litigation. She holds a Ph.D. in plant biology and is a member of the IPO Litigation Committee.

    Christopher Loh

    Fitzpatrick, Cella, Harper & Scinto

    is a partner at Fitzpatrick, Cella, Harper & Scinto.  He practices complex patent litigation in the areas of pharmaceuticals, biotechnology and chemistry.  He also counsels clients on transactional and patent prosecution issues concerning both small-molecule drugs and biological products, and advises clients on a range of IP matters including inventorship, trade secrets, and licensing.

  • Damages after Western Geco: Impact on Patent Litigation Strategy and Client Counseling

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 07/12/2018

    This webinar will discuss the impact of the recent Supreme Court decision in Western Geco v Ion. That opinion overturned decades of Federal Circuit precedent and expanded the damages for infringing a U.S. patent to include foreign lost profits.

    At the U.S. Supreme Court oral argument in Western Geco v. Ion, a case about expanding the damages for infringing a U.S. patent to include foreign lost profits, a heated and far-ranging debate ensued. Earlier, some amici curiae had stressed the huge stakes at issue. For instance, Fairchild Semiconductor joined forces with The Internet Association, arguing that allowing lost profits damages from outside the U.S. "would have negative fallout for economic policy, U.S. commerce, and foreign relations." Even the “threat [of such damages] would encourage important industries to relocate abroad,” they claimed.

    In late June, the Court disposed of the matter with an opinion from Justice Thomas. This webinar will focus on the impact of this decision on patent litigation strategy, as well as client counseling. The Court’s decision overturned decades of Federal Circuit precedent by holding that Western Geco’s award for lost profits was a permissible domestic application of §284. Our panel includes the chief IP counsel for a major multinational; the former head of patents at Microsoft who is now with a law firm where he focuses on strategic IP counseling, IP transactions, and license agreements; and a patent litigator who has been involved in these issues for years on behalf of a patent owner. They will discuss:

    • • How Western Geco might impact decisions regarding the location of R&D, manufacturing, and contract signing.
    • • The immediate and long term effects on litigation strategy for both plaintiffs and defendants.
    • • Whether the impact will be limited to § 271(f)(2) cases or may be broader.
    • • What kind of proof plaintiffs will need to bolster their claims for worldwide damages.
    • • How the question of proximate cause “could limit or preclude damages in particular cases,” an issue the Court explicitly declined to address.

    Speakers:

    • Bart Eppenauer, Shook Hardy & Bacon LLP
    • Buckmaster de Wolf, General Electric Company
    • Blair Jacobs, Paul Hastings LLP

    Bart Eppenauer

    Shook, Hardy & Bacon LLP

    is managing partner of the Seattle office of Shook Hardy & Bacon, where he focuses on strategic IP counseling and analysis, pre-­litigation and litigation strategy, and complex IP transactions and license agreements. Bart rejoined Shook in 2013, after serving as Microsoft’s chief patent counsel for more than a decade. Under Bart's guidance, Microsoft’s high-quality patent portfolio resulted in a successful IP licensing program. Bart is a member of IPO’s Amicus Brief Committee, and authored IPO’s Supreme Court amicus brief in Western Geco.

    Buckmaster de Wolf

    General Electric Co.

    is Vice President and Chief IP Counsel of General Electric and General Counsel of GE Global Research. He was formerly GE’s Senior Counsel Litigation & Legal Policy, focusing on IP litigation. Prior to joining GE, Buck was a partner in the San Francisco office of Howrey. He is a member of the Board of Directors of IPO, as well as a member of several IPO committees including the Amicus Brief Committee and the International Steering Committee.

    Blair Jacobs

    Paul Hastings LLP

    is a litigator with the IP practice of Paul Hastings who has extensive first-chair experience in patent cases. He obtained reversal of a jury damages award against his client Fairchild at the Federal Circuit in litigation involving extraterritoriality and continues to represent Fairchild in subsequent cases.

  • Wilfullness after Halo

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 06/14/2018

    This webinar will discuss of how corporate strategy and litigation tactics must change in the new legal environment that has developed since the Supreme Court’s Halo decision two years ago

    Enhanced damages for patent infringement no longer is a rarity in the two years since the Supreme Court lowered the bar for alleging and proving willfulness in its Halo decision. In just the last few months, Illinois federal Judge Harry Leinenweber raised Chamberlain's $3.8 million trial verdict to $11.4 million after finding the conduct of a rival garage door opener maker to be egregious. In May, Texas federal Judge Rodney Gilstrap found deliberate copying of a water filter design and awarded Whirlpool Corp. $3.8 million in enhanced damages on a $7.6 million verdict.

    In this webinar, our expert panel will describe winning corporate strategy and litigation tactics in this new environment. Two of the panelists are litigators with recent courtroom successes involving willfulness issues — and the third is a leading academic expert on patent law and damages. They will analyze recent case law from both district courts and the Federal Circuit and describe:

    • Current pleading standards for willfulness, including proving knowledge of the patent or willful blindness, and the impact of letters of counsel;
    • The effect of Halo on the availability of pre- suit and post-suit willfulness and the impact of the timing of the notice of infringement; and
    • The relevance of the Read factors (Read Corp. v. Portec, Inc., Fed. Cir. 1992) for egregious behavior in light of the fact that enhancement needn’t always follow a finding of willfulness.

    Speakers:

    • Thomas Cotter, University of Minnesota School of Law
    • Richard Megley, Lee Sheikh Megley & Haan 
    • Kathi Vidal, Winston & Strawn LLP

    Thomas Cotter

    University of Minnesota School of Law

    is the Briggs and Morgan Professor of Law at the University of Minnesota School of Law in Minneapolis. Prior to joining academia, he clerked for the Hon. Lawrence Pierce, U.S. Court of Appeals for the Second Circuit, and worked in private practice. He is the author of the blog Comparative Patent Remedies and of a book of the same name (Oxford U. Press, 2013).

    Richard Megley

    Lee Sheikh Megley & Haan

    is a founding partner of Lee Sheikh Megley & Haan, a Chicago IP litigation firm that launched in 2015. Rich has been successful in obtaining large damage awards and royalties for patent plaintiffs, and has led licensing campaigns that have brought in revenues of more than $75 million. This spring he succeeded in fending off enhanced damages at the Federal Circuit, despite a jury finding of willfulness.

    Kathi Vidal

    Winston & Strawn LLP

    is a patent litigator and the managing partner of the Silicon Valley office of Winston & Strawn. She has first-chaired many high-stakes litigations involving high tech companies. Earlier in her career, she worked as a systems and software design engineer at GE. This spring she won a jury verdict of willfulness for client Chamberlain Group in the Northern District of Illinois, and an award of enhanced treble damages from the judge.

  • Patent Eligibility in the Life Sciences: Exergen and Praxair- and USPTO Memos on Vanda and Berkheimer

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 06/14/2018

    This webinar will discuss discuss the latest Federal Circuit decisions and USPTO guidance on patent eligibility in the life sciences.

    Pity the life sciences patent prosecutor who tries to find a path through recent appellate court decisions regarding patent eligibility. A recent concurrence in a divided Federal Circuit decision indicated that U.S. Supreme Court decision like Mayo have left too much uncertainty about what is and is not patent eligible under section 101. Like others in the IP community, the concurrence indicated that perhaps Congress should act. But few experts expect a legislative fix to come quickly. That leaves both patent owners and applicants with a pressing need to assess the impact of recent significant Federal Circuit opinions, such as Exergen, Vanda and Praxair.

    Exergen and Vanda have been the cause for cautious optimism for some life science companies. Exergen’s invention, a diagnostic patent, was upheld under section 101 by the Federal Circuit, which was considered an important event post-Mayo. This decision is referenced in the USPTO’s Berkheimer memo of 19 April, which takes the agency into the uncharted territory of trying to decide how much and what kind of evidence it takes to show that an invention is not "well understood, routine and conventional."

    Vanda affirmed a district court’s finding that claims to a personalized method of treatment are patent eligible. In early June, the USPTO issued a new memo to examiners on Vanda. The Federal Circuit decision didn’t address a number of relevant issues, however, such as whether a doctor could be a direct infringer through divided infringement. The most recent of the three decisions is far more ominous for life science inventions. Praxair, a recent appeal of an IPR
    decision, could result in many section 101 challenges being made in IPRs in the form of a printed matter/obviousness challenge.

    Our panel includes a life sciences expert at the USPTO, a top patent lawyer at a major pharmaceutical company, and a founding shareholder of an IP law firm who specializes in biotech. They will assess the cumulative impact of recent changes and delineate prosecution strategies to address them.

    Paul Golian

    Bristol-Myers Squibb

    is Vice President & Assistant Counsel, Intellectual Property at Bristol-Myers Squibb Company.  He is responsible for the oncology therapeutic area, and provides strategic counsel on all facets of patent law.  Paul joined BMS in 2002, having previously worked in law firms.  He chairs the Pharmaceutical & Biotechnology Issues Committee of IPO.

    Ali Salimi

    U.S. Patent & Trademark Office

    is a senior legal advisor in the Office of Patent Legal Administration (OPLA) of the USPTO.  His responsibilities include providing legal and policy guidance to the Deputy Commissioner for Patent Examination Policy and the Director of OPLA, including formulating policy regarding section 101 issues.  Ali examined patents for more than a decade in Technology Group 1600.

    Warren Woessner

    Schwegman Lundberg & Woessner, P.A.

    is a founding partner and chair of the biopharma group at Schwegman Lundberg & Woessner.  Warren works on solutions for complex prosecution problems.  He holds a Ph.D. in organic chemistry and is the author of the blog Patents4Life.

  • A New PTAB Landscape The Impact of SAS, Recent Federal Circuit Decsisions, and the Proposed Change to the BRI Standard

    Contains 5 Component(s), up to 1.00 CLE credit hours Recorded On: 05/31/2018

    This webinar features the Chief Judge of the PTAB in conversation with two top litigators — one a leading practitioner at the PTAB and the other a preeminent advocate at the Federal Circuit and the Supreme Court — to discuss the path ahead after the recent host of major developments that will affect PTAB practice.

    This webinar features the Chief Judge of the PTAB in conversation with two top litigators — one a leading practitioner at the PTAB and the other a preeminent advocate at the Federal Circuit and the Supreme Court — to discuss the path ahead after the recent host of major developments that will affect PTAB practice.

    Topping the list of changes are those forced by the Supreme Court in its SAS decision this April. Changing some of the basic ground rules of AIA trials, SAS holds that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision.

    Then, earlier this month the U.S. Patent and Trademark Office proposed a new rule that would change the claim construction standard used in America Invents Act (AIA) reviews. Under the proposal, the PTAB would no longer use the broadest reasonable interpretation standard to interpret the patent claims in an AIA review, replacing it with the standard used by federal courts and the U.S. International Trade Commission.

    Many experts see both of these changes as making the PTAB an even more important venue for patentability challenges. But the Federal Circuit’s affirmance rate of PTAB decisions now hovers at around 70 percent, as it has increasingly demonstrated a willingness to send cases back to the Board. Our litigator panelists will give tips on how to build a successful appeal that results in remand or reversal, while the chief judge is expected to talk about the impact of Federal Circuit decisions on PTAB practice. And panelists will discuss how to try to convince the PTAB to change its mind about invalidating a patent on remand, which occurs about 40 percent of the time.

    Speakers:

    • Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
    • Gregory Castanias, Jones Day
    • Hon. David Ruschke, U.S. Patent and Trademark Office

    Erika Arner

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner at Finnegan and a nationally-recognized leader in trial practice before the Patent Trial and Appeal Board. She has represented patent owners and petitioners in more than 100 PTAB trials, primarily as lead counsel, and currently serves as president of the PTAB Bar Association. She has also successfully argued appeals from the PTAB to the Federal Circuit, for instance, winning remand of a PTAB decision invalidating an air freshener patent last fall.

    Gregory Castanias

    Jones Day

    is a partner at Jones Day and head of its Federal Circuit practice. Greg represented SAS Institute Inc. in its recent 5-4 win before the U.S. Supreme Court — an opinion which changed the ground rules for trials before the PTAB.  His experience includes 60-plus Federal Circuit arguments including many appeals from the PTAB on behalf of both patent owners and petitioners.

    Hon. David Ruschke

    U.S. Patent and Trademark Office

    is Chief Judge for the Patent and Trial Appeal Board, where he has served for the past two years. He manages PTAB trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings, and appeals from adverse examiner decisions in patent applications and reexamination proceedings. Previously, Chief Judge Ruschke served as chief patent counsel of Medtronic’s CSH business unit, with sales in excess of $3 billion. Prior to joining Medtronic, he was a litigator at Covington & Burling and clerked for Chief Judge Glenn L. Archer, Jr. and Circuit Judge Arthur J. Gajarsa at the U.S. Court of Appeals for the Federal Circuit. Chief Judge Ruschke holds a PhD in organometallic chemistry