Seminar  Seminar

USPTO Post-Grant Patent Trials 2014


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.



9:00 Program Overview
Speakers: Scott A. McKeown, Robert Greene Sterne

9:15 The First 18 Months of Post-Grant Patent Challenges at the Patent Trial & Appeal Board (PTAB)
Speakers: Teresa "Terry" Stanek Rea

10:15 Networking Break

10:30 The PTAB Petition, Pre-Trial Phase, and Trail Institution
Speakers: Greg H. Gardella, David L. McCombs

11:30 PTAB Trial Mechanics - Discovery, Motion Practice, Amendment
Speakers: Oliver R. Ashe, Eldora L. Ellison

12:30 Lunch Break

1:45 PTAB Trial Conclusion - The Oral Hearing, Final Written Decision, Rehearing and Appeals to the CAFC
Speakers: Hon. Raymond Chen, Scott A. McKeown, Robert Greene Sterne, Bruce H. Stoner

2:45 Networking Break

3:00 Covered Business Method (CBM) Challenges and Post-Grant Review (PGR)
Speakers: Erika Harmon Arner, R. Danny Huntington

4:00 Optimal Strategy & Tactics in the Post-Grant Trial World including Parallel Litigation Proceedings
Speakers: Melissa A. Finocchio, Hon. Faith S. Hochberg, Scott A. McKeown, Robert Greene Sterne

Program Attorney(s)
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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Special Note: In New York, newly admitted attorneys may receive CLE credit only for attendance at "transitional" programs during their first two years of admission to the Bar. Non-traditional course formats such as on-demand web programs or recorded items, are not acceptable for CLE credit. Experienced attorneys may choose to attend and receive CLE credit for either a transitional course or for one geared to experienced attorneys.  All product types, including on-demand web programs and recorded items, are approved for experienced attorneys.

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Item# 51642
Location:  New York, NY
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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.