Seminar  Seminar

USPTO Post-Grant Patent Trials 2013

Why you should attend

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.

What you will learn

The program focuses on the role of post-grant USPTO proceedings as component of a litigation strategy, including pre-trial and post-trial options. Although the course will focus on strategic considerations, common procedural traps for the unwary will also be identified. The relative advantages and disadvantages of the various proceedings are explained both from the perspective of the Patentee and Third Party. Perspectives of the judiciary are presented, including case studies of well-known disputes. Insight to the organization, operation and procedures of the USPTO’s Patent Trial and Appeal Board, Central Reexamination Unit, and Office of Patent Legal Administration are discussed.

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.

Please plan to arrive with enough time to register before the conference begins. A networking breakfast will be available upon your arrival.

Morning Session:  9:00 a.m. - 12:30 p.m.

9:00  Program Overview

W. Todd Baker, Robert Greene Sterne

9:15  Patent Trial and Appeal Board (PTAB) Trial Proceedings, Reexamination Before the Central Reexamination Unit, and the Office of Patent Legal Administration

  • Derivation
  • Ex Parte Reexamination
  • Inter Partes Reexamination (Legacy)
  • Inter Partes Review
  • Post-Grant Review
  • Transitional Program for Covered Business Method Patents

Hon. James Donald Smith (Invited), Hon. Michael P. Tierney (Invited)

10:15  Post-Grant Strategies and Tactics

  • The challenger perspective
  • The patent owner perspective
  • Portfolio considerations
  • Estoppel
  • When, what, and why to challenge patentability at the USPTO instead of validity in the District Court or the ITC
W. Todd Baker

11:15  Networking Break

11:30  Discovery Practice Before the PTAB
  • Pretrial discovery options
  • Initial disclosures
  • Protective orders
  • Discovery standards
  • Expert declarant selection and cross-examination
  • Impeachment and use of inconsistent statements
Eldora L. Ellison, Michael L. Kiklis

12:30  Lunch Break

Afternoon Session:  1:45 p.m. - 5:00 p.m.

1:45  Practice Before the PTAB Roundtable
  • Retrospective of first trial petitions
  • Motion practice
  • Scheduling
  • Rule refinements
  • Practice tips
Eugene R. Quinn, Jr., Moderator; Lisa A. Dolak, Robert Greene Sterne

2:45  Networking Break

3:00  Appeals to the Court of Appeals for the Federal Circuit
  • Appeal route
  • Standards of review
  • Briefing schedule
  • Effective briefs
  • Oral argument
  • Practice tips
Nancy J. Linck, David L. McCombs

4:00  The U.S. District Court and ITC Judicial Perspectives
  • Parallel universe for patentability/validity determinations between the USPTO and the district courts and the ITC
  • Different claim construction
  • Different burdens of proof
  • Estoppels
  • Stays
  • Timelines of parallel proceedings
Douglas A. Cawley, Hon. Barbara M. G. Lynn, Scott P. McBride

5:00  Adjourn
W. Todd Baker ~ Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Robert Greene Sterne ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Douglas A. Cawley ~ McKool Smith PC
Lisa A. Dolak ~ Professor, Syracuse University College of Law
Eldora L. Ellison ~ Sterne, Kessler, Goldstein & Fox P.L.L.C.
Michael L. Kiklis ~ Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Nancy J. Linck, Ph.D. ~ Rothwell, Figg, Ernst & Manbeck, P.C.
Hon. Barbara M.G. Lynn ~ District Judge, United States District Court, Northern District of Texas
Scott P. McBride ~ McAndrews, Held & Malloy, Ltd.
David L. McCombs ~ Haynes and Boone, LLP
Eugene R. Quinn, Jr. ~ President and Founder,, IP Watchdog, Inc.
Hon. James Donald Smith ~ Chief Administrative Patent Judge, United States Patent and Trademark Office, Patent Trial and Appeal Board
Hon. Michael P. Tierney ~ Lead Administrative Patent Judge, Trial Section, United States Patent and Trademark Office, Patent Trial and Appeal Board
Program Attorney(s)
John M. Mola ~ Director of California Operations, Practising Law Institute
Austin Seminar Location

AT&T Executive Education Conference Center, 1900 University Avenue, Austin, Texas 78705. 512-404-1900.

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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.

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Related Items

Live Seminars  Live Seminars

USPTO Post-Grant Patent Trials 2014 (San Francisco, CA) Apr. 28, 2014

Handbook  Course Handbook Archive

USPTO Post-Grant Patent Trials 2014 Robert Greene Sterne,
Scott A. McKeown,
USPTO Post-Grant Patent Trials 2013 Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C.
W. Todd Baker, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Scott A. McKeown, Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Item# 44917
Location:  Austin, TX
We are sorry, but this program is no longer available for purchase online. For more information please call our Customer Service Department at (800) 260-4PLI.

Seminar attendance includes course handbook and associated course materials. A downloadable course handbook will also be available several days prior to the program start for your review.