A New Day at the PTAB? Using the New Pilot Program for Motions to Amend and the Clarification on Reissue and Re-exam (RECORDING)
Recorded On: 02/06/2020
This webinar will analyze two recent developments that could provide a boost to patent owners whose patents are threatened by AIA proceedings at the PTAB: the ongoing pilot program for motions to amend that was implemented in March 2019; and the USPTO’s clarification of how patent owners can use reissue and reexamination proceedings to amend patents during or even after an AIA review.
Panelists include a litigator who will share his first-hand experience of the new pilot, another experienced PTAB litigator, and an in-house lawyer at a pharma company that succeeded in amending claims after the October 2017 en banc Federal Circuit decision in Aqua Products Inc. The panel will discuss:
- the experience of parties in the first proceedings filed under the amendment pilot program. In early February, right before the webinar, the PTAB will hold the final oral hearing in Mylan v. Sanofi, the first filed under the new program.
- the USPTO guidance about reissue and re-exam, a reminder that the PTAB is not the only place to amend a patent. The time to completion for both traditional USPTO proceedings has shrunk because the case load of the Central Re-exam Unit has fallen with the growth of the PTAB’s.
Dean Garner, Johnson & Johnson
Josh Griswold, Fish & Richardson, PC
Justin Krieger, Kilpatrick Townsend & Stockton LLP
Johnson & Johnson
Dean Garner is assistant general counsel – patents at Johnson & Johnson. Among his responsibilities is the management of ongoing patent litigation and IPR’s for Ethicon (a J&J business unit). In one such case in December, the PTAB allowed Ethicon to amend one of its patents on a surgical stapler following a challenge from Intuitive, who argued the patent’s original claims were invalid. Dean is a member of IPO’s Asian Practice Committee.
Fish & Richardson, PC
Josh Griswold is a principal in the Dallas office of Fish & Richardson. He is a core member of the firm’s active Patent Post-Grant Practice Group, and is involved with proceedings filed under the USPTO’s new pilot program for motions-to-amend practice in AIA trials. He also helps clients to develop worldwide patent portfolios that effectively exclude competitors and can be monetized through licensing and enforcement.
Kilpatrick Townsend & Stockton, LLP
Justin Krieger is a patent lawyer and the managing partner of the Denver office of Kilpatrick Townsend. He is a first chair inter partes review (IPR) and post-grant review (PGR) litigator with a successful track record of challenging third-party patents as well as defending against patent challenges at the PTAB. Justin also leads a patent prosecution team for clients in the fields of industrial chemistry and pharmaceuticals.