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Strategies for Litigating Patents Concurrently in the District Court and PTAB

Recorded on: Nov. 28, 2017
Running Time: 00:59:49

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Taken from the Web Program Patent Litigation 2017: Advanced Techniques & Best Practices Recorded November 2017 in New York

Strategies for Litigating Patents Concurrently in the District Court and PTAB [00:59:49]

Post-grant proceedings in the U.S. Patent Office continue to be a strategy for parties against whom a patent has been asserted and the path for initiating and defending such proceedings has become clearer. A parallel Patent Office proceeding is often a basis for seeking a stay of the more costly district court proceeding and/or used to bring the patentee to the bargaining table. Recent statistics reflect the continued popularity of filing of inter partes review (IPR) and covered business method review (CBM) proceedings following AIA, though the rates of success are trending downward. This session will explore best practices on complex issues such as content of Patent Owner Responses, joinder and consolidation, Motions to Amend, requests for rehearing, and remand proceedings following an appeal. In addition, the session will cover also address the effects of any such post-grant proceedings on parallel litigation, including stays, as well as the potential effects on collateral estoppel, claim construction positions, willfulness charges, inequitable conduct claims, and on damages and intervening rights will be addressed. 

Carol White

The purchase price of this Web Program segment includes the following article from the Course Handbook available online:

  • Coordination of Issues Between PTAB and District Court Proceedings (July 14, 2017)
    Jeffrey N. Costakos
  • The Evolving Practice of Patent Law Before the PTAB and Federal Courts: Recent Cases and a Deeper Dive into Estoppel and Claim Construction (July 2017)
    Eric Loverro, Ji Young Park, Carol L. White
Presentation Material
  • Strategies for Concurrent PTAB and District Court Litigation
    Carol White
    (s)
    Carol White ~ Intellectual Property Counsel, W.L. Gore & Associates, Inc.
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