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

    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.


    • 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. 

  • Avoiding and Utilizing Prosecution History Traps: Litigation, Prosecution, and Due Diligence (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 10/09/2018

    This webinar will will look at the nature of legal traps that can lurk in prosecution history, caused both by disclaimers and amendments, and how they can snare defendants or plaintiffs in infringement litigation.

    Prosecution history is sometimes overlooked when valuing a patent, but some commentators would say it’s nearly impossible to overestimate the role it can play in litigation. 

    This summer the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a lighting technology patent asserted by Blackbird in the District of Delaware. The Federal Circuit panel determined that the district court had erred in construing the claim term “attachment surface” in finding non-infringement. A claim amendment made during patent prosecution played prominently in the appellate court’s reasoning.

    This webinar will look at the nature of legal traps that can lurk in prosecution history, caused both by disclaimers and amendments, and how they can snare defendants or plaintiffs in infringement litigation. Panelists will provide tips for patent prosecutors on how to try to avoid leaving damaging history — and for transactional lawyers on how to spot problems during due diligence that could turn the patent into a lemon for a purchaser.

    It features attorneys with a wide array of experience related to these issues, including two litigators who recently won cases for their clients by exploiting prosecution history: UCB, Inc. v Yeda Research and Development Co.,Ltd. and Biogen Idec, Inc. v. Glaxosmithkline LLC. Life science litigation involving broad patents can often find a patent owner boxed in by the need to meet Section 112 requirements in prosecution. But the scope of disclaimers can also be dispositive in high-tech litigation such as Avid Tech., Inc. v. Harmonic, Inc., which centered on digital data storage.


    • Bryan Diner, Finnegan Henderson Farabow Garrett & Dunner LLP
    • Brian Nolan, Mayer Brown LLP
    • James Trainor, Fenwick & West LLP

    Bryan Diner

    Finnegan, Henderson, Farabow, Garrett & Dunner LLP

    is a partner at Finnegan who practices all aspects of IP law, including strategic patent portfolio management, litigation, prosecution, opinion preparation, due diligence, and interferences in diverse technical areas.  Bryan served as the managing partner of the firm’s Brussels office for six years.  Strategic portfolio management and litigation counseling for European clients is an important part of Bryan’s practice.

    Brian Nolan

    Mayer Brown LLP

    is a partner at Mayer Brown who focuses on IP litigation, counseling, and due diligence, particularly in the life sciences.  Brian has experience counseling clients concerning their biological products, as well as litigating cases brought under the Hatch-Waxman statute.  He was co-counsel for GlaxoSmithKline in a Federal Circuit case that turned on a prosecution disclaimer.  He regularly counsel’s investment companies concerning acquisitions in which the buyer’s valuation is driven by IP assets.

    James Trainor

    Fenwick & West LLP

    is a partner at Fenwick & West who concentrates his practice on patent litigation and has successfully represented clients in all phases of litigation, including as first-chair trial and appellate counsel.  Jim also provides IP transactional services, ranging from technology licensing to support for M&A and project finance deals across the life sciences, high-tech, telecommunications, and transportation industries.  He successfully led his client UCB, a pharmaceutical company, to a win in a case at the Federal Circuit by asserting patent prosecution estoppel.

  • Biosimilars in the Antitrust Spotlight: Patent Litigation and Settlement (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 10/04/2018

    This webinar will discuss how the U.S. Supreme Court issued its landmark decision in FTC v. Actavis, finding that payments made by brand-name drug companies to generic manufacturers in patent settlements can raise antitrust concerns

    It’s been a little over five years since the U.S. Supreme Court issued its landmark decision in FTC v. Actavis, finding that payments made by brand­name drug companies to generic manufacturers in patent settlements can raise antitrust concerns. The prolific and ongoing litigation stemming from that decision is limited to date to the small-molecule drugs governed by the Hatch-Waxman regulatory scheme. Now some commentators believe that the FDA has set down a pro-competition gauntlet regarding large molecule biologic drugs governed by the BPCIA — and that the FTC is not far behind.

    Up until now the economic arguments associated with pharmaceutical IP and antitrust litigation were based on the pattern of small molecule drugs, where generics usually achieve a substantial share of the market quickly with large price discounts. But the complexity and costs of developing biosimilar drugs, along with substantially different regulatory and market conditions, has already shaped a different pattern for biosimilar competition, raising new issues of which practitioners need to be aware.                           

    Our panel – a veteran pharma litigator, an antitrust lawyer who formerly worked at the FTC and who was involved in FTC v. Actavis, and a healthcare economist and expert witness – will address these issues and look ahead and discuss:

    • The likely shape of settlements in patent litigation between innovator biologic companies and biosimilar aspirants
    • In light of FTC challenges to a series of contemporaneous business deals including patent settlements, the future of non-cash forms of compensation
    • As multiple patents in biosimilar infringement litigation can be asserted in staggered waves over time, whether “at-risk” entry is more or less likely than for traditional generic drugs


    • Nicholas Mitrokostas, Goodwin Procter, LLP
    • Richard Mortimer, The Analysis Group
    • Mark Perry, Baker Botts LLP

    Nicholas Mitrokostas

    Goodwin Procter LLP

    is a patent litigator and partner in Goodwin Procter’s IP Litigation group.  Nick has extensive trial and PTAB experience representing clients in the pharmaceutical and biotechnology industries in patent and antitrust litigation.  He represents both innovator and challenger entities, is an editor of the Biosimilars Reference Guide, and co-leads a biosimilars blog,

    Richard Moritmer

    The Analysis Group

     holds a Ph.D. in economics and is managing principal of The Analysis Group.  He has provided economic analyses in numerous antitrust matters involving questions of market power, pricing, and market exclusion in a variety of industries, with a focus on healthcare.  He is a co-author of the recent article “The Economics of Biosimilar Drugs and New Considerations in Intellectual Property and Antitrust Litigation.”

    Mark Perry

    Baker Botts LLP

    is a partner in the Antitrust and Competition Practice at Baker Botts, with particular experience in e issues involving the intersection of antitrust and IP law.  Mark returned to private practice after serving as Counsel to the Director of the Federal Trade Commission's Bureau of Competition from 2015 to 2016 and as an attorney in the FTC’s Health Care Division from 2010 to 2015.  He was directly involved in many of the agency's most important antitrust enforcement actions involving the pharmaceutical industry, including FTC v. Actavis and FTC v. Cephalon.

  • The Revised PTAB Trial Practice Guide and Its Impact on Your Practice (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 09/13/2018

    This webinar will discuss the August release of revisions to the PTAB Trial Practice Guide is of major importance to both patent owners and petitioners.

    The August release of revisions to the PTAB Trial Practice Guide is of major importance to both patent owners and petitioners. Our program features Lead Administrative Patent Judge Michael Tierney, who continues to play a leading role in devising the rules for proceedings under the AIA, in a discussion with two top PTAB litigators. This revision is the first major update of the Guide since its publication in August 2012.

    The panelists will discuss the reasoning behind each change and explain how these revisions will impact PTAB practice.

    All of the major revisions to the Guide will be addressed, including:

    • The introduction of a surreply to the prior sequence of briefs
    • The circumscribed role to be played by expert evidence
    • The introduction of a new prehearing conference call, which some commentators predict has the potential to be as important as the main oral hearing
    • Clarifications regarding motions to strike and motions to exclude


    • Judge Michael Tierney, U.S. Patent and Trademark Office
    • Tarek Fahmi, Ascenda Law Group
    • Eliot Williams, Baker Botts LLP

    Hon. Michael Tierney

    U.S. Patent and Trademark Office

    is a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board. He handles trial proceedings brought under the AIA, as well as chemical and electrical ex parte appeals. He continues to play a leading role in devising the rules for proceedings under the AIA.

    Tarek Fahmi

    Ascend Law Group

    is a founder of Ascenda Law Group, an IP boutique based in San Jose. Tarek has acted as lead counsel in more than two hundred inter partes and covered business method patent (CBM) reviews on behalf of both petitioners and patent owners. Before starting his own firm in 2012, Tarek was a partner at what is now a large international firm. His practice spans more than two decades worth of patent portfolio development and technology licensing, as well as litigation.

    Vice Chief Judge Scott Weidenfeller

    U.S. Patent and Trademark Office

     is Vice Chief Administrative Patent Judge of the Patent Trial and Appeal Board. He manages operational and administrative aspects of the Board, including providing guidance on legal issues and the impact of changes to internal Board procedures. He previously served as Associate Solicitor of the USPTO. His primary responsibilities included managing litigation against the USPTO involving the AIA, including challenges to PTAB post-issuance proceedings. Before joining the USPTO, he worked in private practice and served as a law clerk to the Hon. Timothy B. Dyk of the Federal Circuit.

  • From BRI to Phillips at the PTAB: Consequences for Practice (RECORDING)

    Contains 5 Component(s), Includes Credits Recorded On: 09/06/2018

    This webinar will discuss how panelists examined dozens of litigation's in recent years where both district courts and the PTAB construed the same patents.

    Most patent lawyers tend to be confident they know the difference between the two competing standards for patent claim construction -- the “broadest reasonable interpretation” (BRI) used by the USPTO in patent application examination, and the Phillips standard used by district courts. But a look at how tribunals actually apply those differing standards is enlightening. Our panelists examined dozens of litigation's in recent years where both district courts and the PTAB construed the same patents. Their timely findings provide useful insights and tactics as the PTAB is expected to switch from BRI to Phillips in post-grant proceedings this fall.

    Whether the PTAB will make the change retroactive is still uncertain. The panelists will give tips on how both patent owners and petitioners should proceed in the interim. Other ramifications of the change are:

    • Deciding on a proposed claim construction will require even more care, because there will no longer be an opportunity to take differing positions at the PTAB and district court, now a frequent and often successful litigation strategy
    • That defendants in litigation can expect to be able to mount stronger non-infringement positions as a uniform and narrower claim interpretation makes it less likely the accused device will infringe
    • The potential fallout from the PTAB adopting a standard for AIA proceedings that differs from the one used in all other USPTO proceedings, such as reexamination and reissue.


    • Eric Cohen, Brinks Gilson & Lione
    • Kevin Greenleaf, Dentons US LLP
    • Shaun Zhang, Goldman Ismail Tomaselli Brennan & Baum LLP

    Eric Cohen

    Brinks Gilson & Lione

    is a counsel at Brinks Gilson & Lione and is active in patent litigation in federal courts, before the U.S. International Trade Commission and the PTAB. He is vice chair of IPO’s Post-Grant Patent Office Committee.

    Kevin Greenleaf

    Dentons US LLP

    is a counsel at Dentons and a leader of the Post-Grant Group of its IP and Technology practice. He has handled more than 100 reexams and dozens of AIA trials. Prior to becoming a lawyer, Kevin worked as a senior component design engineer at Intel Corp. He is a member of IPO’s Post-Grant Patent Office Committee and its Section 101 Legislation Task Force.

    Shaun Zhang

    Goldman Ismail Tomaselli Brennan & Baum LLP

    is a lawyer at Goldman Ismail Tomaselli Brennan & Baum. Before entering private practice, he was a patent counsel at HP Enterprise Co.

  • Assignor Estoppel: The Current State of the Law (RECORDING)

    Contains 5 Component(s), Includes Credits 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.


    • 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 (RECORDING)

    Contains 5 Component(s), Includes Credits 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.


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

    Gregory Castanias

    Jones Day

    Greg Castanias is a partner at Jones Day in Washington, DC. He is head of the firm’s Federal Circuit team and has almost 30 years’ experience as a leading appellate and intellectual property litigator. His experience includes five US Supreme Court arguments, 70+ Federal Circuit arguments, and countless others in federal and state courts across the nation, from Alaska to Connecticut. His intellectual property experience includes such diverse technologies as genetics, diagnostics, pharmaceuticals, chemistry, electronics, and mechanical fields, as well as copyright, trademark, and trade secret disputes. He is Vice-Chair of IPO’s Amicus Brief Committee.

    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 (RECORDING)

    Contains 5 Component(s), Includes Credits 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


    • 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 (RECORDING)

    Contains 5 Component(s), Includes Credits 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


    • 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 (RECORDING)

    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


    • 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


    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.