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.
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
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.
Greg H. Gardella, David L. McCombs
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.
Oliver R. Ashe, Jr., Eldora L. Ellison
12:30 Lunch Break
Afternoon Session: 1:45 p.m. - 5:00 p.m.
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); Hon. Raymond Chen, Hon. Bruce H. Stoner, Jr. (Ret.)
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.
Erika Harmon Arner, R. Danny Huntington
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); Melissa Finocchio, Hon. Faith S. Hochberg
John M. Mola
~ Director of California Operations, Practising Law Institute
New York City Seminar Location
PLI New York Center, 1177 Avenue of the Americas, (2nd floor), entrance on 45th Street, New York, New York 10036. Message Center, program days only: (212) 824-5733.
New York City Hotel Accommodations
Crowne Plaza Times Square Manhattan, 1605 Broadway (at 48th Street), New York, NY 10019 (212) 977-4000. When calling, mention Practising Law Institute. You can also make reservations online to access PLI's rates.
The Muse, 130 West 46th Street, New York, NY 10036. Please call reservations at 1-800-546-7866. When calling, please mention Practising Law Institute. You can also book online at https://gc.synxis.com/rez.aspx?Hotel=26750&Chain=10179&promo=PRLW.
Millennium Broadway Hotel, 145 West 44th Street, New York, NY 10036. Please call reservations at 1-800-622-5569. When calling, please mention Practising Law Institute. You can also book online at https://gc.synxis.com/rez.aspx?Hotel=11533&Chain=5303&promo=PLAW.
Hyatt Times Square, 135 W. 45th Street, New York, NY 10036. For reservations, please call (646) 364-1234. When calling mention rate code CR56218 or Practising Law Institute.
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