This is a webcast of the live San Francisco session.
Why you should attend
Post-grant patent proceedings were pursued in record numbers at the USPTO in 2013. The level of filing continues to accelerate beyond initial expectations, as both the public and the courts recognize the value of these fast-track administrative proceedings. 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. Patent Trial and Appeal Board (PTAB) proceedings are the first viable alternative to costly and time consuming litigation. These new administrative trial proceedings are currently used to resolve patentability challenges, eliminate costly litigation proceedings, reduce damage exposure, mitigate possible injunctive relief, accelerate settlement, and foster predictability.
Since September 16, 2012, when the new contested 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 in the months ahead, Post-Grant Review (PGR) will also be available to challenge these patents during the first nine months after issuance.
Potential benefits of PTAB patentability challenges include:
- Create an opportunity to resolve administratively focused 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 litigation of validity issues
- Facilitate settlement on terms favorable to the defendant
- Create an intervening rights defense
- Develop claim construction
- 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 the Third Party. Perspectives of the judiciary are presented, 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.
PLI Group Discounts
Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount. For further discount information, please contact firstname.lastname@example.org or call (800) 260-4PLI.
PLI Can Arrange Group Viewing to Your Firm
Contact the Groupcasts Department via email at email@example.com for more details.
All cancellations received 3 business days prior to the program will be refunded 100%. If you do not cancel within the allotted time period, payment is due in full. You may substitute another individual to attend the program at any time.
All times are P.D.T.
Morning Session: 9:00 a.m. - 12:30 p.m. (P.D.T.)
9:00 Program Overview
Scott A. McKeown, Robert Greene Sterne
9:15 The First Eighteen Months of Post-Grant Patent Challenges at the Patent Trial and Appeal Board (PTAB)
Since their introduction on September 16, 2012, the post-grant challenge mechanisms of the America Invents Act have had a profound impact on patent assertion practices in the U.S. This segment will review the first eighteen months of these proceedings, with a specific focus on Inter Partes Review (IPR) and the Covered Business Method (CBM) proceedings.
Emerging trends, notable outcomes, and best practices will be identified relative to the 700+ proceedings filed with the PTAB. Both petitioner and patentee perspectives will be analyzed relative to current and future USPTO
practices, including contemplated legislative and/or rule-based developments.
Teresa “Terry” Stanek Rea
10:15 Networking Break
10:30 The PTAB Petition, Pre-Trial Phase, and Trial Institution
The preliminary proceeding of an IPR/PGR/CBM is a critical component of the PTAB patent challenge. In this segment, best practices for both petitioner and patentee will be presented by leading practitioners. Topics include statutory bars, CBM standing, petition preparation, real parties in interest, development of declaration testimony, redundancy, the preliminary response and requests for rehearing.
W. Todd Baker, Timothy E. Bianchi
11:30 PTAB Trial Mechanics - Discovery, Motion Practice, Amendment
A PTAB trial spans from the end of the preliminary proceeding of an IPR/PGR/CBM until the written decision of the PTAB. During such time, “routine” discovery is available and “additional” discovery may be sought. Leading practitioners will explore the unique PTAB discovery standards, practices and pitfalls, as well as common motion practice, observations, and working with the PTAB to resolve disputes. The unique amendment practices of the PTAB will also be explored together with joinder and settlement scenarios.
Eldora L. Ellison, Matthew A. Smith
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m. (P.D.T.)
1:45 PTAB Trial Conclusion - The Oral Hearing, Final Written Decision, Rehearing and Appeals to the CAFC
Practice before the PTAB, especially effective advocacy, is unique relative to more traditional courtroom practices. The PTAB oral hearing at the end of the trial is akin to an appellate oral argument of one or two hours with no live testimony. Appeals from the PTAB are taken to the Court of Appeal for the Federal Circuit (CAFC). The volume of PTAB appeals heading to the Federal Circuit in 2014 will be substantial. Best practices for preparing for oral argument before the PTAB will be presented, as well as developing the record for CAFC review and presenting winning appeals to the CAFC.
Scott A. McKeown, Robert Greene Sterne
(Moderators); Katherine Kelly Lutton, Hon. Kathleen M. O’Malley
2:45 Networking Break
3:00 Covered Business Method (CBM) Challenges and Post-Grant Review (PGR)
The CBM proceeding has been the focus of intense debate both within the USPTO and the halls of Congress. The unique CBM standing requirements will be discussed relative to issued PTAB decisions, the statute, and proposed legislative revisions. The unique advantages of a CBM filing relative to IPR will also be discussed. PGR, which is limited to first-inventor-to-file patents, will also be explored in anticipation of the coming waves of patents that will test this expansive PTAB challenge mechanism.
Michael T. Rosato, Bob Steinberg
4:00 Optimal Strategy and Tactics in the Post-Grant Trial World, Including Parallel Litigation Proceedings
Presented as an alternative to litigation, IPR/PGR/CBM proceedings are sometimes parallel tracked with more traditional litigation disputes. The ability to stay district court and/or ITC proceedings will be analyzed, as well as leveraging the differing PTAB evidentiary, proof, and claim construction standards relative to the active litigation. The impact of estoppel, and earlier court decisions (e.g., Fresenius v. Baxter and SAP v. Versata) on subsequent post-grant challenges, will also be discussed.
Scott A. McKeown, Robert Greene Sterne
(Moderators); Catherine Lacavera, Lisa McFall, Hon. Ronald M. Whyte
W. Todd Baker
~ Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Hon. Ronald M. Whyte
~ District Judge, United States District Court, Northern District of California
John M. Mola
~ Director of California Operations, Practising Law Institute
PLI makes every effort to accredit its Live Webcasts. Please check the CLE Calculator above for CLE information specific to your state.
PLI's Live Webcasts
are approved for MCLE credit (unless otherwise noted in the product description
) in the following states/territories: Alabama, Alaska, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana1
, Iowa*, Kansas*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York2
, Oklahoma, Oregon*, Pennsylvania4
, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia5
, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.*PLI will apply for credit upon request.
Arizona: The State Bar of Arizona does not approve or accredit CLE activities for the Mandatory Continuing Legal Education requirement.
Arkansas and Oklahoma: Audio-only live webcasts are not approved for credit.
1Indiana: Considered a distance education course. There is a 6 credit limit per year.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.
2New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video 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.
3Ohio: To confirm that the live webcast 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 biennial 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.
4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.
5Virginia: All distance learning courses are to be done in an educational setting, free from distractions.
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, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: firstname.lastname@example.org.
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.