6-Hour Program

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Overview

Why you should attend

Join our expert faculty, including PTAB and District Court Judges, to learn all you need to know about critical Post-Grant proceedings. Post-grant patent challenge proceedings were pursued in record number – more than twice what was predicted – before the USPTO’s Patent Trial & Appeal Board (PTAB) in 2014. The level of filing continues to accelerate well beyond initial expectations as both the public and the courts recognize the value and threat of these fast-track administrative proceedings.  The substantial costs and uncertainty of patent litigation has encouraged the development of alternative case management strategies, which at least require consideration of challenging patents at the PTAB as the first, true alternative to costly, uncertain, and time consuming litigation. These administrative trial proceedings are currently used to resolve patentability challenges, reduce costly litigation proceedings, reduce damage exposure, mitigate possible injunctive relief, accelerate settlement, and foster predictability.

 Since September 16, 2012, when the new challenge proceedings under the America Invents Act (AIA) became operational, PTAB options, such as Inter Partes Review (which replaced inter partes patent reexamination) and a special post-grant review for Covered Business Method patents, have been widely embraced by patent challengers making the PTAB the busiest patent court in the U.S. On March 16, 2013, the USPTO began to accept patent applications under the “first-inventor-to-file” system. As these applications begin to issue as patents, Post-Grant Review (PGR) has become available (two have already been petitioned) to challenge these patents during the first 9 months after issuance.

Potential benefits of PTAB patentability challenges especially to petitioners include:

  •  Create an opportunity to administratively resolve patentability challenges to issued U.S. patents
  • Create an opportunity to stay a concurrent litigation
  • Create a lower cost alternative to district court and/or ITC patent validity disputes
  • Facilitate settlement on terms favorable to the defendant
  • Create an intervening rights defense
  • Develop claim construction positions
  • 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
  • Provide for the ability to impact the prosecution of a patentee’s continuation portfolio
  • Advance obviousness defenses before technical judges
  • Undermine or prevent damage verdicts with a USPTO unpatentability ruling
  • Provide an additional basis on which to obtain a stay of judgment pending appeal

What You Will Learn

The program focuses on the role of post-grant USPTO proceedings as a component of a litigation strategy, including pre-trial and post-trial options.  Although the course will focus on strategic considerations, procedural traps for the unwary will also be identified. The relative advantages and disadvantages of the various proceedings are explained from the perspectives of both the Patentee and Third Party. Perspectives of the judiciary are presented by PTAB and District Court Judges, including case studies of well-known disputes.

Who Should Attend

Patent owners and investors involved in patent litigation or considering the initiation of patent litigation; corporate counsel responsible for managing a patent portfolio and responding to third party inquiries; patent litigators advising clients in disputes that involve or may lead to litigation; advisors, owners, and analysts involved in patent licensing, valuation, sale, or monetization; and patent professionals representing others before the USPTO in the areas of post-grant patent practice.

Credit Details