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.