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  • 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

    Speakers:

    • 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

    Speakers:

    • 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.

    Speakers:

    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  

    Speakers:

    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

    Ericsson

    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

    Speakers:

    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

    Speakers:

    • 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?

    Speakers:

    • 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.

  • Design Patents in China

    Contains 5 Component(s), Includes Credits Recorded On: 10/25/2018

    This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China. Experts say design patents are underutilized in China by foreign companies, to their detriment.

    This webinar will provide a thorough grounding in the law and practice of obtaining and enforcing design patents in China. Experts say design patents are underutilized in China by foreign companies, to their detriment. Chinese companies certainly act as if Chinese design patents can give them an edge. More than one-third of all patent applications filed in China by domestic entities are for design patents, compared to just 10 percent of all patent applications filed in China by foreign applicants.

    As many a foreign company has discovered, if it doesn’t register its designs in China, there’s a good chance a Chinese company will — and the foreign company may be forced to pay a license for use of its own design. U.S., Japanese, and Korean automakers have repeatedly accused Chinese companies of stealing their designs, only to find the accused patented the designs first in China. Last year, Apple faced a widely reported ban on sales of its iPhone 6 in China after an administrative agency found that the iPhone 6 and iPhone 6 Plus infringed on the design patent rights of a Chinese manufacturer, Shenzhen Baili. The Beijing Intellectual Property Court later revoked the ban and Apple’s sales continue unimpeded 

    Our panel – a leader of the USPTO’s “China team” who was previously a law-firm patent litigator, a Beijing-based lawyer who specializes in design patents, and an in-house patent counsel at a major multinational – will discuss the role of different Chinese government entities and regulators in infringement disputes. Other issues they will discuss include:

    • The ramifications of China’s refusal to recognize partial designs.
    • Differences between U.S. law and Chinese law with respect to protection against unauthorized use of a product protected by a design patent.
    • Special concerns in patenting GUIs (graphical user interfaces).
    • The interaction of utility patents and design patents in China, differences in the jurisprudence applicable to each, and whether it is possible to obtain both types of protection on one product.

    Speakers:

    • Bart Fisher, Caterpillar Inc.
    • Biqing Huang, CCPIT Patent and Trademark Office
    • Elaine Wu, U.S. Patent and Trademark Office

    Bart Fisher

    Caterpillar Inc.

    is a patent attorney at Caterpillar Inc. He works on the Caterpillar Patent Development Team handling global patent preparation and prosecution for designs. Bart previously handled patent preparation, prosecution, counseling, clearance, and agreement support for numerous business lines. He practiced with law firms prior to joining Caterpillar in 2010.

    Biqing Huang

    CCPIT Patent and Trademark Law Office

    is an attorney at CCPIT Patent and Trademark Office in Beijing. His practice focuses on patent drafting, patent prosecution, patent reexamination, patent validity, and patent infringement litigation. Biqing also specializes in design patents, with experience in prosecution, validity, and infringement issues.

    Elaine Wu

    U.S. Patent and Trademark Office

    is an attorney in the Office of Policy and External Affairs at the U.S. Patent and Trademark Office. In that capacity, she serves as the leader for the “China team,” a group of attorneys at the Office of Policy and External Affairs with specific expertise and knowledge about China’s patent, trademark, copyright, and enforcement systems. She previously worked as a patent litigator at Howrey.

  • A Surge at the PTAB? Filing and Litigation Strategy in Light of Upcoming Change to the Phillips Standard

    Contains 5 Component(s), Includes Credits Recorded On: 10/17/2018

    This webinar will discuss views how the move to Phillips at the PTAB is likely to change optimal litigation strategies going forward for both petitioners and patent owners.

    The USPTO announced earlier this month that inter partes review, post-grant review, and covered business method patent proceedings will switch from the current broadest reasonable interpretation claim construction standard to the same standard used by district courts, the Phillips standard, starting on 13 November.  Soon after the announcement, many experts began to predict a rush of petitioners to the Patent Trial and Appeal Board.  The surge is expected because litigants may try to preserve the flexibility now allowed by differing standards in the different forums by acting to institute proceedings before the change occurs.

    Our panel of three very experienced PTAB litigators will give their views how the move to Phillips at the PTAB is likely to change optimal litigation strategies going forward for both petitioners and patent owners.  The issues they will discuss include:

    • Will institution rates at the PTAB be changed by the switch to the Phillips standard?
    • Will district court judges be less likely to grant stays now that a PTAB claim construction will be more of a true preview of a Markman finding?
    • Advantages and disadvantages of delaying an IPR filing.
    • The timing of PTAB and district court decisions — and the potential for collateral estoppel.
    • The additional complications involved in multi-defendant litigation.

    Speakers:

    • David Cavanaugh, Wilmer Pickering Hale and Dorr, LLP
    • Scott McKeown, Ropes & Gray LLP
    • Michael Specht, Sterne Kessler Goldstein and Fox, PLLC

    David Cavanaugh

    Wilmer Cutler Pickering Hale and Dorr, LLP

    is a partner at WilmerHale and chair of its Post-Grant Patent Proceedings Group. He has been lead counsel or counsel of record in more than 250 inter partes review (IPR) proceedings. He develops strategies for using IPRs as a vehicle toward settlement of related district court cases, as well as strategies for joinder of parties. David was previously a senior patent counsel at Boston Scientific Corp. and a patent examiner at the USPTO.

    Scott McKeown

    Ropes & Gray LLP

    is a partner in the IP Litigation Practice of Ropes & Gray and chair of its PTAB Group. He has handled more than 250 PTAB matters since 2012 and also focuses on related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott is author of the widely-read Patents Postgrant blog. He worked as an electrical engineer in software, telecomm and related technologies.

    Michael Specht

    Sterne, Kessler, Goldstein & Fox, PLLC

    co-chairs Sterne Kessler’s Patent Office Litigation Practice and is a director in its Electronics Practice Group. Mike has served as counsel in nearly 100 IPRs, CBMs, and PGRs, with more than 50 representations on behalf of petitioners, and more than 40 appearances on behalf of patent owners. His practice includes high value patent prosecution, as well as district court and ITC litigation.