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

    Contains 5 Component(s), Includes Credits 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), Includes Credits 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), Includes Credits 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), Includes Credits 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), Includes Credits 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), Includes Credits 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

    Gregory Castanias heads the Federal Circuit practice at Jones Day. He represented SAS Institute at the Supreme Court, in a 2018 case that transformed the way that patents are litigated at the PTAB, and represented Myriad there in a Section 101 case. He has argued 70+ times at the Federal Circuit and has won numerous appeals from the PTAB. 

    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

  • Protecting Brands under the New European Data Regulation

    Contains 5 Component(s), Includes Credits Recorded On: 05/10/2018

    This webinar will discuss owners of global brands will face a difficult challenge when the new European General Data Protection Regulation (GDPR) goes into effect on the 25th of May.

    Owners of global brands will face a difficult challenge when the new European General Data Protection Regulation (GDPR) goes into effect on the 25th of May. A key resource for brand owners could even go dark on that date because of stiff new privacy rules implemented in regional laws across the entire European Union.

    That resource is WHOIS information, which for two-decades has helped brand owners identify who owns a domain and how to contact them. Those records, regulated by the Internet Corporation for Assigned Names and Numbers (ICANN), developed into an essential tool for maintaining the integrity of the domain name registration and website ownership process. It is expected the cloaking of that information will provide more cover for the bad actors who populate the on-line space internationally, including cybersquatters, phishers, counterfeiters, and other infringers. Brand owners will need to adopt new tactics to enforce their marks in this altered landscape.

    Our panel includes trademark counsel from a major multinational corporation and two law firm specialists in domain name
    and Internet IP law. They will discuss:


    • The global reach of the GDPR, which will apply to all companies selling to and storing personal information about citizens in Europe, including companies with no facility in that region.
    • ICANN's proposal for implementing the privacy rules.
    • Strategies for brand owners to address the new landscape.
    • Options open to brand owners who will now find it more difficult to bring relatively inexpensive administrative proceedings due to lack of information.
    • Whether expensive court-based enforcement actions will become more common.
    • Whether enforcement budgets will need to grow to keep up with more elusive threats and, if so, how much?

    Speakers:

    • Dennis Prahl, Ladas & Parry LLP
    • Marc Trachtenberg, Greenberg Traurig, LLP
    • Valerie Verret, Exxon Mobil

    Dennis Prahl

    Ladas & Parry LLP

     is a trademark partner at Ladas & Parry LLP and a specialist in domain name and Internet law.  Dennis is a member of the Intellectual Property Constituency (IPC) of ICANN.  He also serves as president of Principium Strategies, Ladas & Parry’s affiliated Brand monitoring service and ICANN-accredited domain name registrar subsidiary.  He is a member of the IPO U.S. Trademark Law committee.

    Marc Trachtenberg

    Greenberg Traurig, LLP

    is a shareholder of Greenberg Traurig, LLP who specializes in trademark law, with a special focus on domain names and social media. He identifies threats to clients’ brands and aggressively enforces rights on their behalf. Marc has participated in the development of Internet policy and governance and is active in the ICANN IP Constituency. Previously, he worked as a software project manager and in the online advertising industry.

    Valerie Verret

    Exxon Mobil Corp.

    is Trademark Counsel for Exxon Mobil Corporation. She helps her business clients obtain, protect, and enforce trademarks globally. Her work includes the ESSO, EXXON and MOBIL marks, as well as non-traditional marks such as service station trade dress. Previously, Valerie was in private practice at Baker Botts. She is Chair of IPO’s U.S. Trademark Law Committee.

  • After SAS: A Transformation of Post-Grant Practice

    Contains 5 Component(s), Includes Credits Recorded On: 05/04/2018

    This webinar discuss SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

    SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

    SAS held 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. The Supreme
    Court’s opinion left many aspects of the implementation of this change to the PTAB’s discretion. Our panel includes a
    former Lead Administrative Patent Judge who just returned to private practice last fall, a leading practitioner before the
    PTAB who also specializes in appeals of PTAB decisions to the Federal Circuit, and a veteran patent litigator who has
    been involved in many parallel proceedings at the PTAB and in district court. They will analyze and discuss:


    • The implementation decisions that have already been decided and announced by the PTAB.
    • What the changes mean for cases instituted before SAS that are now pending before the PTAB and how both petitioners and patent owners should respond to the “do over.”
    • How should strategy change for challengers considering filing a fresh petition for an IPR and for the patent owner in its preliminary response and throughout the trial?
    • With respect to hundreds of appeals from the PTAB that are now pending at the Federal Circuit that were instituted on only a subset of the petitioner's challenged claims: Should petitioners file a motion to vacate the appeal and remand the case back to the PTAB? What are the Federal Circuit’s options?
    • What will be the impact on parallel district court litigation, the district court’s decision to stay the case pending the PTAB Final Written Decision, and on estoppel of challenged claims?

    Speakers: 

    • Michael Stockwell, Kilpatrick Townsend & Stockton LLP
    • Trenton Ward, Finnegan, Henderson, Farabow, Garrett & Dunner LLP
    • Jon Wright, Sterne Kessler Goldstein & Fox, PLLC

    Mitchell Stockwell

    Kilpatrick Townsend & Stockton LLP

    is a partner and patent litigator at Kilpatrick Townsend & Stockton LLP with extensive experience representing clients before U.S. district courts and the PTAB. He represented a plaintiff in the Middle District of Florida where the court admitted as evidence the PTAB’s denial of the defendants’ petition for an IPR.

    Trenton Ward

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

    is a partner and patent litigator at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.  Ward joined Finnegan last year from the PTAB where he had spent three years as a Lead Administrative Patent Judge.  He served on the panel for more than 275 Decisions on Institution and Final Written Decisions, authoring many of them.  Trenton assisted the Chief Judge in formulating and executing policy for AIA trials and PTAB operations.  He previously worked as an electrical engineer.

    Jon Wright

    Sterne, Kessler, Goldstein & Fox, PLLC

    is a director in the Trial & Appellate and Electronics Practice Groups of Sterne Kessler Goldstein & Fox, PLLC. Jon focuses primarily on contested proceedings before the PTAB and on appeals of those cases to the United States Court of Appeals for the Federal Circuit. He is a recognized leader in inter partes review practice when there is co-pending district court litigation or a USITC investigation. 

  • Biosimilar and Hatch-Waxman Litigation: Jurisdiction and Venue Issues

    Contains 5 Component(s), Includes Credits Recorded On: 04/25/2018

    This webinar discusses Infringement litigation over biosimilars and pharmaceuticals poses its own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

    Infringement litigation over biosimilars and pharmaceuticals poses its own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.


    These issues are particularly hot right now, with several disputes pending that could have a wide impact going forward, such as Momenta Pharmaceuticals v. Bristol-Myers Squibb. Further, after the Supreme Court’s TC Heartland decision, judges must decide where the artificial act of infringement occurs —and district courts are already split.


    To help you navigate these complex issues, our panel includes the head of U.S. patent litigation for a major international
    pharma and biologic company that is active both as an innovator and in biosimilars, as well as two veteran litigators (one
    who typically represents innovators and the other who represents biosimilar applicants and generic drug
    companies). They will discuss what you need to know, and will make predictions, regarding:

    • Whether a biosimilar applicant will be able to bring BPCIA litigation before the brand sponsor brings its own suit.
    • Will a biosimilar maker who has not yet filed its marketing application with the FDA be able to appeal an
    unsuccessful inter partes review? Or does it need Article III standing to seek an appeal?
    • The complicated calculus regarding venue in both Hatch-Waxman litigation and BPCIA litigation.
    • Issues when there are multiple defendants in different jurisdictions.
    • How to deal with foreign defendants.

    Speakers: 

    • Cynthia Hardman, Procter Goodwin IP
    • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto
    • Peter Waibel, Novartis

    Cynthia Hardman

    Goodwin & Procter, LLP

    is a partner in Procter Goodwin’s IP Litigation Group. Cynthia has significant experience representing generic companies in ANDA patent litigation under the Hatch-Waxman Act and also represents companies in litigation regarding the BPCIA.

    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.

    Peter Waibel

    Novartis

    is Vice President, Head of Patent Litigation, for Novartis Pharmaceuticals Corporation. Mr. Waibel is responsible for management of all aspects of patent litigation for Novartis’ innovator pharmaceutical and biopharmaceutical products in the U.S. and Canada. Previously, Peter was a Senior Patent Attorney for NovoNordisk and practiced patent law at Frommer, Lawrence and Haug. 

  • The Role Facts in Patent Eligibility Decisions: Analysis and Strategy

    Contains 5 Component(s), Includes Credits Recorded On: 04/12/2018

    In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.

    In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.

    The cause of the shift is a trio of patentee-friendly Federal Circuit opinions all penned by Judge Moore. These decisions, Berkheimer, Aatrix and Exergen, together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under section 101. Hewlett Packard, the defendant in Berkheimer, has requested a rehearing of the case by the en banc Federal Circuit. It’s no exaggeration that the future of section 101 law in the U.S. hangs in the balance, given the view of many experts that the Supreme Court is not eager to revisit these issues at present.

    Our panel of experts will address:
    • How to best leverage these decisions to your advantage.
    • What you need to know about how to handle issues that could arise on appeal.
    • Who is likely to decide patent eligibility issues going forward, using what evidence, and at what stage of litigation?
    • What model will prevail: Making the factual decision at trial or a Markman hearing-type model disposing of patent eligibility before trial?
    • How does the analogy to obviousness determinations hold up?

    Speakers:

    • Calvin Griffith, Jones Day
    • Darly Joseffer, King & Spalding
    • Corey Salsberg, Novartis

    Calvin Griffith

    Jones Day

    is a partner and patent litigator at Jones Day. He has won summary judgment, against infringement claims for a number of parties, including Canon and Procter & Gamble. He also represents the Cleveland Clinic Foundation in its petition for certiorari asking the Supreme Court to review a Federal Circuit decision invaliding three patents for claiming patent-ineligible laws of nature.

    Daryl Joseffer

    King & Spalding

    is head of the Appellate, Constitutional and Administrative Law practice at King & Spalding, concentrating mainly on IP cases. Daryl has litigated several Section 101 appeals for Google, and has filed an amicus brief for the Internet Association asking for a rehearing en banc of Berkheimer. Previously, Daryl served as the Principal Deputy Solicitor General.

    Corey Salsberg

    Novartis

    is Vice President and Global Head of IP Affairs for Novartis, a global healthcare company headquartered in Switzerland.  He develops and advocates for the company’s policy positions. Prior to joining Novartis, Corey was an IP litigator in private practice.