Post-grant patent proceedings were pursued in record number at the USPTO in 2012. The substantial costs and uncertainty of patent litigation require the development of alternative case management strategies, which at least require consideration of challenging patents at the USPTO. To this end, patent reexamination remains a viable alternative to costly litigation or parallel path to enhance litigation positions. Yet due to the public outcry for even more robust USPTO post issuance proceedings, the America Invents Act (AIA) introduced entirely new options such as Post-Grant Review, Inter Partes Review (which replaced inter partes patent reexamination), Derivation Proceedings, and a special post-grant review for Covered Business Method patents. Going forward into 2013, it is anticipated that the USPTO will become an even more prominent battleground for patent disputes.
Potential benefits of post-grant patent challenges to defendants include:
- Provide an opportunity to stay a concurrent litigation
- Provide a low-cost alternative to district court and/or ITC litigation
- Facilitate settlement on terms favorable to the defendant
- Create an intervening rights defense
- Create additional file history that provides new non-infringement and/or estoppel theories
- Demonstrate objective evidence of a lack of willfulness
- Lessen the probability of injunctive relief
- Demonstrate the “but for” materiality of references applied in an inequitable conduct defense
- Undermine or prevent damage verdicts with a USPTO invalidity ruling
- Provide an additional basis on which to obtain a stay of judgment pending appeal
The program is taught by a faculty of judges, preeminent lawyers, and industry leaders who have earned national reputations in patent litigation and in post-grant proceedings at the USPTO.
Lecture Topics [Total time 06:18:40]
Segments with an asterisk (*) are available only with the purchase of the entire program.
- Program Overview* [00:03:49]
Scott A. McKeown, Robert Greene Sterne
- Patent Trial & Appeal Board (PTAB) Trial Proceedings, Reexamination Before the Central Reexamination Unit, and the Office of Patent Legal Administration [01:04:27]
David J. Kappos
- Post-Grant Strategies & Tactics [01:03:46]
Scott A. McKeown
- Discovery Practice Before the PTAB [01:04:29]
Michael L. Kiklis, Michael B. Ray
- Practice Before the PTAB Rountable [01:02:25]
Robert Greene Sterne, Eugene R. Quinn, Jr., Lisa A. Dolak
- Appeals to the Court of Appeals for the Federal Circuit [00:57:57]
John A. Dragseth, Lisa A. Dolak, Robert Greene Sterne
- The U.S. District Court & ITC Judicial Perspectives [01:01:47]
Katherine Pauley Barecchia, Hon. Theodore R. Essex, Robert Greene Sterne, Patricia A. Carson
The purchase price of this Web Program includes the following articles from the Course Handbook available online:
- Introduction to Patent Office Litigation, Chapter 1 Patent Office Litigation, First Edition: October, 2012, 2 Volumes, (Thomson Reuters 2012)
Robert Greene Sterne
- The Trial, Chapter 11, Patent Office Litigation, First Edition: October, 2012, 2 Volumes, (Thomson Reuters 2012)
Robert Greene Sterne, Eldora L. Ellison
- Post-Grant USPTO Patent Proceedings & Concurrent Litigation
Stephen G. Kunin, Greg H. Gardella, Scott A. McKeown
- Discovery
Stephen G. Kunin, Greg H. Gardella, Scott A. McKeown
- Sanctions
Stephen G. Kunin, Greg H. Gardella, Scott A. McKeown
- Board Decisions Involving the First Wave of Contested Proceedings
Robert Greene Sterne
- The Patent Trial and Appeal Board (PTAB), Chapter 6, Patent Office Litigation, First Edition: October, 2012, 2 Volumes, (Thomson Reuters 2012)
Robert Greene Sterne, Eldora L. Ellison
- Patent Office Post-Grant Trials and the Duty of Candor
Lisa A. Dolak
- Federal Circuit Standard of Review for Inter Partes Patentability Challenges
Robert Greene Sterne
- The Use of Reexaminations and Post-Grant Review as Litigation Tactics
Katherine Pauley Barecchia
- Index to USPTO Post-Grant Patent Trials 2013
Presentation Material
- 8th Annual Advanced Patent Law Institute
David J. Kappos
- Post-Grant Strategies & Tactics
Scott A. McKeown
- Discovery Practice Before the PTAB_Kiklis PowerPoint
Michael L. Kiklis
- Discovery Practice Before the PTAB_Ray PowerPoint
Michael B. Ray
- PowerPoint Presentation
Lisa A. Dolak
- Appeals to the Court of Appeals for the Federal Circuit
John A. Dragseth
PLI makes every effort to accredit its On-Demand Web Programs and Segments. Please check the CLE Calculator above for CLE information specific to your state.
On-Demand Web Programs and Segments are approved in:
Alabama1, Alaska, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois , Iowa2*, Kansas, Kentucky*, Louisiana, Maine*, Mississippi, Missouri3, Montana, Nebraska, Nevada, New Hampshire4, New Jersey, New Mexico5, New York6, North Carolina7, North Dakota, Ohio8, Oklahoma9, Oregon*, Pennsylvania10, Rhode Island11, South Carolina, Tennessee12, Texas, Utah, Vermont, Virginia13, Washington, West Virginia, Wisconsin14 and Wyoming*.
Iowa, Mississippi, Oklahoma, and Wisconsin DO NOT approve Audio Only On-Demand Web Programs.
Minnesota approves live webcasts ONLY
Please Note: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement. PLI programs may qualify for credit based on the requirements outlined in the MCLE Regulations and Ariz. R. Sup. Ct. Rule 45.
*PLI will apply for credit upon request. Louisiana and New Hampshire: PLI will apply for credit upon request for audio-only on-demand web programs.
1Alabama: Approval of all web based programs is limited to a maximum of 6.0 credits.
2Iowa: The approval is for one year from recorded date. Does not approve of Audio-only On-Demand Webcasts.
3Missouri: On-demand web programs are restricted to six hours of self-study credit per year. Self-study may not be used to satisfy the ethics requirements. Self-study can not be used for carryover credit.
4New Hamphsire: The approval is for three years from recorded date.
5New Mexico: On-Demand web programs are restricted to 4.0 self-study credits per year.
6New York: Newly admitted attorneys may not take non-traditional course formats such as on-demand Web Programs or live Webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.
7North Carolina: A maximum of 4 credits per reporting period may be earned by participating in on-demand web programs.
8Ohio: To confirm that the web program has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.
9Oklahoma: Up to 6 credits may be earned each year through computer-based or technology-based legal education programs.
10Pennsylvania: PA attorneys may only receive a maximum of four (4) hours of distance learning credit per compliance period. All distance learning programs must be a minimum of 1 full hour.
11Rhode Island: Audio Only On-Demand Web Programs are not approved for credit. On-Demand Web Programs must have an audio and video component.
12Tennessee: The approval is for the calendar year in which the live program was presented.
13Virginia: All distance learning courses are to be done in an educational setting, free from distractions.
14Wisconsin: Ethics credit is not allowed. The ethics portion of the program will be approved for general credit. There is a 10 credit limit for on-demand web programs during every 2-year reporting period. Does not approve of Audio-only On-Demand Webcasts.
Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon and keynote speakers.
If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.
Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, call Customer Service (800) 260-4PLI (4754) or e-mail info@pli.edu.