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IP Chat Channel – Post Grant Proceedings

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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IPR Estoppel in District Court:  How Wide?

Webinar Date: 03/29/2017

As more patents survive AIA inter partes reviews, the application of estoppel for invalidity arguments in district court and the PTAB is becoming increasingly important. A year ago, in Shaw Industries v. Automated Creel Systems, the Federal Circuit held that estoppel does not apply to grounds denied by the PTAB in an IPR because the “IPR does not begin until it is instituted.”

But in Intellectual Ventures v. Toshiba late last year, a district court also refused to apply estoppel to “references that were never presented at all.” It is not clear at present whether the Federal Circuit will confirm that view, or if it will feel obliged to define the boundaries of prior art that “reasonably could have been raised” as in Section 315. Today, an uncomfortable stasis holds: District courts are interpreting Shaw to apply Section 315(e)(2) one way, while the PTAB interprets nearly identical language in Section 315(e)(1) in a different way that broadens IPR estoppel. Our panel will analyze the situation for both patent owners and petitioners, and offer tactics on how both can best navigate the legal uncertainties.

Speakers:

  • Jon Gurka, Knobbe, Martens, Olson & Bear LLP
  • Hon. Faith Hochberg, Hochberg ADR
  • Thad Kodish, Fish & Richardson PC



Ex Parte Schulhauser and Claim Drafting for Computer-Implemented Inventions

Webinar Date: 03/01/2017

In the less than four months since the PTAB designated Ex Parte Schulhauser as a precedential decision last fall, the Board has cited it in more than three dozen appeals from USPTO patent application rejections. Schulhauser, the first ex parte appeal to be designated precedential since 2013, clarified the difference in scope between system and method claims with conditional limitations. That distinction is particularly important in claiming computer-implemented inventions, where patent prosecutors often rely on a combination of method, system, and apparatus claims. (Some life science patents also rely on this multiplicity.) Schulhauser clarified that no patentable weight is given to limitations in method claims that rely on a condition precedent that is not required to be performed — which means an examiner need only show that one of the two “paths” of the method claim is anticipated or obvious over the prior art. By contrast, under the broadest reasonable interpretation, the Board did give patentable weight to conditional limitations in Schulhauser’s system claim, because it recited “structure capable of performing all the recited functions.”

Our panel has examined the follow-on decision citing Schulhauser to provide insight into the varied types of method-claim limitations that have not been given patentable weight, including how to avoid emerging trigger words such as, “carrying out a step upon a threshold being exceeded,” “upon,” “whether,” or “when.” They will also discuss how these decisions extend Schulhauser’s holding to system, machine, and apparatus claims without means-plus-function limitations, and will give other relevant practice tips.

Speakers:

  • Christopher Francis, Bejin Bieneman
  • Scott McKeown, Oblon
  • Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



Evidence of Prior Art at the PTAB: Rigorous Proof -- or Else

Webinar Date: 01/19/2017

Several interesting recent decisions at the PTAB exhibit a “man bites dog” pattern in which the patent owner has succeeded in disqualifying the petitioner’s evidence of prior art, and saved patent claims as a result. These decisions reflect the limited discovery allowed by the PTAB to meet its tight deadlines. Although ambiguity about prior art might be resolved in discovery at district court, the PTAB generally requires evidence of prior art to be meticulously substantiated in the petition for an AIA review.

These cases, including Blue Calypso v. Groupon and GoPro v. Contour IP, expand the edges of existing case law on the use of Internet-based and printed prior art regarding public accessibility to those skilled in the art. Moreover, in a recent post-grant review (PGR) Altaire Pharmaceuticals v.  Paragon Bioteck, the first time the PTAB upheld a patent in a PGR, the patent survived because the petitioner failed to prove that the claims were invalid due to public use or on-sale activity. Altaire asserted that earlier sales of its own eye solution product had made Paragon’s invention obvious, but failed to conform to PTAB rules about experimental testing.

Speakers:

  • David Conrad, Fish & Richardson PC
  • Brian Mudge, Andrews Kurth Kenyon LLP
  • Michael Rosato, Wilson Sonsini Goodrich & Rosati



Risky Interactions: Using Multiple USPTO Post-Grant Proceedings Concurrently and Sequentially

Webinar Date: 12/15/2016

Keeping up with the rapidly-evolving law regarding AIA post-grant proceedings is a necessity for many IP lawyers. However, they must contend with an added dimension: simultaneously or sequentially handling multiple kinds of proceedings involving the same patent or patents. The panelists on this webinar, all with recent firsthand experience of these complicated situations, will give tips on:

  • Parallel reexaminations and IPRs, from both the patent owner and petitioner view;
  • Certificates of correction;
  • Parallel reissues;
  • Continuations;
  • Handling multiple IPRs on the same patent;
  • Patent owner estoppel following an adverse judgment.

Speakers:

  • David Cavanaugh, Wilmer Cutler Pickering Hale & Dorr LLP
  • Kevin Greenleaf, Dentons LLP
  • Matthew Kelly, CME Group



BRI and Claim Drafting

Webinar Date: 12/09/2016

A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).

The panel, which also includes the USPTO expert and two different patent prosecutors, will consider in depth claiming options for a series of hypothetical inventions and accompanying prior art. They will discuss techniques such as using a figure in the application to overcome prior art and “incorporating by reference.”

Speakers:

  • Amir Penn, Brinks Gilson & Lione
  • John Phillips, Fish & Richardson, PC
  • Joseph Weiss, USPTO



BRI in Patent Prosecution

Webinar Date: 12/08/2016

A patent prosecutor cannot know how a claim will be interpreted years after a patent issues, and must live with the nightmare possibility that a district court or the PTAB will find that the “broadest reasonable interpretation” (BRI) of a claim renders the patent invalid. In everyday practice, meanwhile, he or she must continually balance the desire to win a broad claim construction from the USPTO (to preserve future enforceability) with the need to tighten the scope (to avoid the prior art).

The panel, which includes a USPTO expert and two patent prosecutors, will discuss practice tips for finessing the issues posed by BRI for patent prosecutors, relying on several PTAB and BPAI decisions of ex parte appeals. They also will discuss how to make sure an issued patent is not caught unexpectedly in the future by Section 112(f), and how to make the best of an existing application in which the specification is lacking but not open to broadening without a loss of priority date.

Speakers:

  • Charles Bieneman, Bejin Bieneman PLC
  • Sameer Gokhale, Oblon, McClelland, Maier & Neustadt, LLP
  • Joseph Weiss, USPTO



Launching a Post-Grant Proceeding: In-house Perspective and Strategy

Webinar Date: 12/01/2016

This webinar will consider best practices for the in-house counsel regarding the decision to launch an inter partes review (IPR) proceeding against a patent and managing the process of AIA petition and trial. Our panel includes two in-house counsel from different industries as well as an experienced USPTO litigator. They will discuss:

  • How to assess the strongest defensive case against the assertion of a patent and when not to launch an IPR;
  • Finding guidance in PTAB statistics;
  • The impact of the Halo and Commil decisions on the decision to launch;
  • Hiring outside counsel and predicting costs;
  • Overseeing the petition, the choice of expert, and the preparation for oral hearing;
  • Whether to file an appeal if you lose.

Speakers:

  • Matthew Cutler, Harness, Dickey & Pierce PLC
  • David Kelley, Ford Global Technologies LLC
  • Kimberly Schmitt, Intel Corp.



Ethics in AIA Post-Grant Proceedings at the PTAB

Webinar Date: 11/10/2016

In its amendments to the Rules of Practice for Trials earlier this year, the PTAB stiffened the rules concerning the duty of candor for attorneys who practice before the Board and set forth the process and conditions under which it will impose sanctions. The PTAB runs a tight ship: in the handful of years that the PTAB has held IPR and CBM trials under the AIA, it has already sua sponte sanctioned several petitioners and patent owners or their counsel.

This webinar features a Lead Administrative Patent Judge of the PTAB who will review the ethical obligations of participants in AIA post-grant proceedings. Two experienced post-grant litigators will discuss several topics with the judge, including:

  • The rules regarding motions for sanctions by parties in an inter partes  (IPR) or covered business method (CBM) review;
  • Lessons from successful motions for sanctions versus unsuccessful motions;
  • Ethical problems that arise due to parallel proceedings at the PTAB and U.S. district courts, including issues regarding protective orders and inconsistent claim construction.

Speakers:

  • Hon. Thomas Giannetti, USPTO
  • Richard Giunta, Wolf Greenfield
  • Kevin Laurence, Renaissance IP



Obviousness After Apple v. Samsung

Webinar Date: 11/02/2016

The early October en banc decision in a smartphone patent dispute between Apple and Samsung has revealed a startling disagreement on the Federal Circuit about obviousness – a concept viewed by many experts as the central issue in patent law. Judge Dyk, a member of the original three-judge panel that was overruled by the eight-judges majority, said in a dissent that the majority opinion created “profound changes in the law of obviousness” by turning the legal question into a factual one, contrary to KSR. The majority, in contrast, insisted their opinion involved simply “apply[ing] the existing obviousness to the facts of this case.” The majority and the original panel disagree in this case about what weight to give the jury verdict of non-obviousness. While the original panel found little to support the jury’s finding, the majority found that there was the “substantial evidence” required by law, and that the appellate court needed to show the appropriate deference.

Our panel will discuss the likely impact of this case, as well as of the recent Federal Circuit opinion in Arendi v. Apple, where the court overruled the PTAB invalidation of of Arendi’s patents, stressing that “common sense” critiques of an invention must be supported by substantial evidence and explained with sufficient reasoning. Lessons will also be drawn from the recent PTAB decision Innopharma v. Senju Pharmceutical, where after institution the patentee was able to prove to the PTAB both unexpected technical effects and the nexus between those technical effects and commercial success.

Speakers:

  • Robert Asher, Sunstein Kann Murphy & Timbers
  • Kenneth Corsello, IBM Corp.
  • Justin Hasford, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



Parallel Proceedings in District Court and the PTAB: The Endgame 

Webinar Date: 09/22/2016

Our panel will discuss the latest news and tactics regarding the complex interaction between post-grant proceedings at the PTAB and related district court actions. A substantial number of asserted patents are involved in such parallel proceedings.

The panelists will consider the high-stakes race to the courthouse in parallel proceedings. The law gives little guidance what happens when there is a conflict between decisions by the PTAB and by federal courts on patent validity. In May, for instance, a Texas federal judge ordered Ion Geophysical to pay $21 million to Schlumberger in a patent infringement case, despite a ruling from the PTAB invalidating the underlying patent claims. “The PTAB’s final written decisions are currently no more than nonfinal agency determinations, subject to appeal,” the judge wrote. But in Fresenius v. Baxter (2013), the Federal Circuit decided that a USPTO reexamination decision invalidating a patent trumps prior decisions by both the District Court and the Federal Circuit. The Federal Circuit reasoned that the earlier validity decisions did not count for res judicata purposes because it did not conclude the case as a whole. The Federal Circuit was sharply divided in its Fresenius decision and declined to reconsider the holding en banc in a divided opinion, raising questions about whether a differently composed panel will reach the same outcome.

Speakers:

Gary Frischling, Irell & Manella LLP
Michael Florey, Fish & Richardson, PC
Neil Sirota, Baker Botts LLP




Parallel Proceedings in District Court and the PTAB: Midstream Maneuvers

Webinar Date: 09/20/2016

Our panel will discuss the latest news and tactics regarding the complex interaction between post-grant proceedings at the PTAB and related district court actions. A substantial number of asserted patents are involved in such parallel proceedings.

The panel will consider a spectrum of district court decisions regarding the admissibility of PTAB actions in the corresponding district court proceeding: for instance, the PTAB decision to institute or not institute an inter partes review (IPR) or covered business method patent review (CBM), or the PTAB’s claim construction. The panel will also examine the impact of recent Federal Circuit decisions such as Skyhawke Technologies v. Deca, where the appellate court ruled that PTAB claim construction in an inter partes reexamination is not binding on a district court, and Murata v. Daifuku, which may make it easier for a patent owner to obtain a stay in district court.

Speakers:

Mark Finkelstein, Jones Day
Scott Kamholz, Foley Hoag LLP
Mitchell Stockwell, Kilpatrick Townsend & Stockton LLP




Life Sciences & Section 101: The Way Ahead

Webinar Date: 08/11/2016

The U.S. Supreme Court’s recent decision not to grant certiorari in Ariosa v. Sequenom was a sharp disappointment to many inventors and patent owners who had hoped the Court would revisit and clarify its views on patent eligibility after its decisions in Mayo and Alice. But that was not to be. As a result, the two industries most wounded by Mayo and Alice — life sciences and computer software — must look for paths ahead without any reprieve from the Justices. Recent Section 101 cases from the U.S. Federal Circuit and ex parte PTAB decisions can serve as signposts for both the life sciences and software industries. Our industry-specific panel is made up of a technically-savvy in-house counsel and two top law firm patent prosecutors. They will discuss cases such as:

  • Rapid Litigation v. CellzDirect, where in early July, the U.S. Federal Circuit panel reversed a district court’s holding that claims to a method of isolating and preserving liver cells were patent-ineligible. The appellate court held that the claims did not encompass a judicial exception (step one of the Mayo/Alice analysis). The same kind of analysis helped save patents involving self-referential software databases in Enfish v. Microsoft this spring.
  • Bascom v. AT&T, where in June the U.S. Federal Circuit reversed a district court’s finding that Bascom’s patent for filtering internet content failed step two of the Mayo/Alice The U.S. Federal Circuit stated that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Life science experts believe this finding can also help life science patents.

Our panelists will give specific tips for drafting and prosecuting patents in their industries to avoid Section 101 rejections, resulting in patents that will withstand patent-eligibility attacks in litigation. The life science webinar will include discussion of both therapeutics and diagnostics, and the software webinar will include discussion of several recent useful ex parte PTAB decisions that overturned examiners Section 101 rejections.

Speakers:

Deborah Martin, Pfizer Inc.
Christopher Jeffers, Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Warren Woessner, Schwegman, Lundberg & Woessner, P.A.




Software Section 101: The Way Ahead

Webinar Date: 08/10/2016

The U.S. Supreme Court’s recent decision not to grant certiorari in Ariosa v. Sequenom was a sharp disappointment to many inventors and patent owners who had hoped the Court would revisit and clarify its views on patent eligibility after its decisions in Mayo and Alice. But that was not to be. As a result, the two industries most wounded by Mayo and Alice — life sciences and computer software — must look for paths ahead without any reprieve from the Justices. Recent Section 101 cases from the U.S. Federal Circuit and ex parte PTAB decisions can serve as signposts for both the life sciences and software industries. Our industry-specific panel is made up of a technically-savvy in-house counsel and two top law firm patent prosecutors. They will discuss cases such as:

  • Rapid Litigation v. CellzDirect, where in early July, the U.S. Federal Circuit panel reversed a district court’s holding that claims to a method of isolating and preserving liver cells were patent-ineligible. The appellate court held that the claims did not encompass a judicial exception (step one of the Mayo/Alice analysis). The same kind of analysis helped save patents involving self-referential software databases in Enfish v. Microsoft this spring.
  • Bascom v. AT&T, where in June the U.S. Federal Circuit reversed a district court’s finding that Bascom’s patent for filtering internet content failed step two of the Mayo/Alice The U.S. Federal Circuit stated that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Life science experts believe this finding can also help life science patents.

Our panelists will give specific tips for drafting and prosecuting patents in their industries to avoid Section 101 rejections, resulting in patents that will withstand patent-eligibility attacks in litigation.

Speakers:

Stephen Durant, Schwegman, Lundberg & Woessner, P.A.
Michelle Macartney, Intellectual Ventures, LLC
Amir Penn, Brinks Gilson & Lione




After Cuozzo: Litigation at the PTAB, U.S. District Court, and the Federal Circuit

Webinar Date: 07/06/2016

The USPTO emerged as the big winner in the U.S. Supreme Court’s recent Cuozzo decision. The Court approved the PTO’s approach of applying the broadest reasonable construction (BRI) standard to interpret patent claims in post-grant proceedings and it upheld the agency’s interpretation of the AIA provision that bars challenges to the PTO’s decisions to institute inter partes review (IPR).
Our panelists will place Cuozzo in the context of other recent Supreme Court decisions on IP and on judicial deference to federal agencies. They also will discuss:

  • The avenues that remain open for challenging IPR institution decisions, and the pending cert petitions that challenge USPTO post-grant proceedings on constitutional grounds;
  • Whether a Federal Circuit decision on the reviewability of Covered Business Method reviews (CBMs) is inconsistent with Cuozzo;
  • The Federal Circuit decision SAS Institute v. ComplementSoft that gives guidance on procedural safeguards of the Adminstrative Procedure Act regarding post-grant proceedings;
  • Practical tips for litigators on how to deal with two different claim construction standards going forward and;
  • What lessons should patent prosecutors take from Cuozzo?

Speakers:

Morgan Chu, Irell & Manella LLP
Rachel Krevans, Morrison & Foerster, LLP
Scott McKeown, Oblon




Evidence at the PTAB: New AIA Rules

Webinar Date: 04/14/2016

On May 2, new rules go into effect at the Patent Trial and Appeal Board that apply to all AIA petitions filed on or after that date and to any ongoing AIA preliminary proceeding or trial. Our panel, which includes a PTAB administrative patent judge and two experienced AIA litigators, will discuss how the new rules will affect strategy for both petitioners and patent owners.

The discussion will center on the rule that allows the patent owner to file new testimonial evidence with its preliminary response without any limit on scope. It provides that any factual dispute created by that evidence that is material to the institution decision be resolved in favor of the petitioner solely for purposes of determining whether to institute a trial. The panel will also discuss other aspects of the new rules, including provisions about claim construction for a challenged patent that will expire prior to the issuance of a final written decision by the PTAB.

Speakers:

Judge Michael Tierney, USPTO
Lissi Mojica, Dentons
Jon Wright, Sterne, Kessler, Goldstein & Fox




Redundant Grounds in Post-Grant Proceedings

Webinar Date: 04/07/2016

The recent Federal Circuit decision in Shaw Industries v. Automated Creel Systems is the latest to touch an important issue for companies involved in post-grant proceedings and related litigation: what happens to the claims and prior art references that are left on the cutting room floor after the PTAB institutes a review on just some of the issues raised in a petition?

Shaw Industries appears to be the first time the Federal Circuit is on record agreeing with the PTAB’s policy that issues that are not instituted are not subject to estoppel either at the PTAB or in district court. This clarification may well allow petitioners to take a more liberal strategy to including matters in their petition.

But the Shaw Industries case also highlights concerns of some Federal Circuit judges. Judge Reyna in a concurrence sharply criticized the PTAB for saying it is not obligated to even state a reason for its decisions on whether to institute inter partes reviews. “The PTO’s claim to unchecked discretionary authority is unprecedented,” and appears to disregard the Administrative Procedures Act, Judge Reyna wrote. Our panel of post-grant experts will consider this case and other Federal Circuit decisions involving redundant grounds, such as Synopsis v. Mentor Graphics.

Speakers:

David Cavanaugh, WilmerHale
Grant Ritz, Hewlett Packard Enterprise
Dorothy Whelan, Fish & Richardson




Post-grant Puzzler: Cuozzo at the Supreme Court

Webinar Date: 02/02/2016

Petitioners and patent owners involved in inter partes review (IPR) and covered business methods (CBM) review face significant new uncertainties after the U.S. Supreme Court’s grant of certoriari in Cuozzo v. Lee in mid-January. The high court agreed to address two questions: (1) whether the USPTO acted within its rulemaking authority by adopting “broadest reasonable interpretation” claim construction in AIA proceedings; and (2) whether a party may challenge, on appeal to the Federal Circuit, any part of the PTO’s decision to institute an IPR.

Our panel includes a litigator and a law firm professor with extensive appellate experience in patent law, as well as a top PTAB litigator. They will discuss the options open to the Court, including whether the Justices need to consider whether to give Chevron deference to the USPTO in AIA matters. They also will give timely advice on what to do now to the petitioners and patent owners involved in more than 2,000 cases presently pending at varying stages of the PTAB pipeline: pretrial at PTAB, including petition and preliminary response; trial phase at PTAB; after Final Written Decision; already filed an appeal to the Federal Circuit; before or at oral argument to the Federal Circuit; after oral argument but before Federal Circuit opinion.

Speakers:

Prof. John Duffy, University of Virginia School of Law
Thomas Saunders, WilmerHale
Jon Wright, Sterne Kessler Goldstein & Fox




Double-Patenting: Tech Patents, Double Patenting, and Ex Parte Reexam

Webinar Date: 01/08/2016

This panel will examine how double patenting arises in tech company patent portfolios, how ex parte reexam differs from other post-grant proceedings vis a vis double patenting, and how it can be used to invalidate vulnerable patents. Our panel includes both an in-house tech company lawyer and a law firm lawyer with relevant first-hand experience, and a law firm attorney who was former head of the USPTO’s Central Reexamination Unit.

The Federal Circuit decision twenty months ago in Gilead v. Natco arose out of ANDA litigation over patents on anti-viral drugs, and tremors from that decision – which expanded the universe of patents vulnerable to charges of double patenting — are being widely felt in the pharma and biotech industry. But life sciences companies are not the only ones to find themselves with Gilead’s problem: after asserting a patent in litigation, some high-tech companies have discovered that the defendant can use one of the plaintiff’s later issued but earlier expiring patents to knock out a patent that was issued earlier but expires later. Like drugmakers, some tech companies may come to regret relying heavily on continuations in their patent prosecution, using a “more is more” strategy to grow large patent families. Ex parte reexamination has emerged as the proceeding of choice for tech patent challengers with at least a dozen patents invalidated by the USPTO’s Central Reexamination Unit for double patenting since Gilead.

Speakers:

Barry Bretschneider , BakerHostetler
Jeffrey Hohenshell , Medtronic
Lissi Mojica, Dentons US LLP




Double-Patenting: Impact of Gilead on Bio and Pharma

Webinar Date: 01/07/2016

The Federal Circuit decision twenty months ago in Gilead v. Natco arose out of ANDA litigation over patents on anti-viral drugs, and it is widely seen as expanding the universe of patents vulnerable to charges of double patenting in the pharma and biotech industry. However, life sciences companies are not the only ones to find themselves with Gilead’s problem. After asserting a patent in litigation, some high-tech companies have discovered that the defendant can use one of the plaintiff’s later issued, but earlier expiring patents, to knock out a patent that was issued earlier but expires later.

Like drugmakers, some tech companies may come to regret relying heavily on continuations in their patent prosecution, using a “more is more” strategy to grow large patent families. Ex parte reexamination has emerged as the proceeding of choice for tech patent challengers, with at least a dozen patents invalidated by the USPTO’s Central Reexamination Unit for double patenting since Gilead.

This panel will focus on tips for patent prosecution after Gilead, as well as the litigation outlook with a particular focus on biosimilars. Because many branded pharma companies are entering the biosimilar market, they are finding themselves combing the portfolios of competitors for double patenting weakness, much as generic companies are doing. Our panel features the lawyer who argued for Natco at the Federal Circuit, a law firm biotech lawyer who is an expert on patent term adjustment, and the vice president of IP at a drug development company.

 

Speakers:

Tim Babcock, Akros Pharma Inc.
Jack Brennan, Fish & Richardson
Jeremy Lowe, Axinn Veltrop




CBM Review: Taking Stock of the Case Law

Webinar Date: 12/03/2015

The AIA Covered Business Method (CBM) review deserves its reputation as a fearsome weapon: just 2% of patents against which this review has been instituted have emerged intact. But not all is as grim for patent owners as it may appear. Under the radar, patent owners have been having more success lately in evading the review entirely: in the past fiscal year, almost half of the petitions for CBM have been denied by the PTAB, either because petitioners failed to place the invention within the target circle of a “financial product or service” or because the patent owner proved the patent fell within the exemption of “technological invention”.

Our panel includes a PTAB judge who helped develop the proceedings and sits on CBM review panels, and two litigators with CBM experience. They will discuss the trends in PTAB decisions regarding institution of CBM reviews, considering cases both where petitions were successful and where they were denied. They also will discuss the recent important Federal Circuit decisions regarding the institution of post-grant proceedings, including Cuozzo, Achates, and Versata. Unlike its mostly hands-off approach to inter partes review, in the latter decision the Federal Circuit ruled that the PTAB’s decision of whether a patent is a CBM patent is subject to its appellate review.

Speakers:

Hon. Michael Tierney, USPTO
Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Ben Quarmby, MoloLamken




New Litigation Scenarios after Akamai: Fact Pattern Hypotheticals

Webinar Date: 09/17/2015

Trying once again to meet the challenge posed by situations in which multiple parties work together and infringe a patent, in August the en banc Federal Circuit expanded the scope of a key aspect of patent law: the definition of direct infringement under Section 271(a) of the Patent Act. In the new Akamai opinion, the Federal Circuit adds to its own earlier precedent an additional category of direct infringement that falls within the scope of “control or direction”: “… Liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.

Our panel of litigators will consider several different fact patterns to discern and discuss, at the margin, where the boundary will fall between infringement and non-infringement under this new scope. Some of these facts will be drawn from earlier Federal Circuit cases on joint infringement involving the Internet and software, such as McKesson v. Epic Systems and Golden Hour v. emsCharts; others will be hypotheticals to analyze joint infringement in personalized medicine and diagnostics.

Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP
Andrei Iancu, Irell & Manella LLP
Steve Moore, Kilpatrick Townsend & Stockton LLP




A Kinder, Gentler PTAB? Proposed New Trial Rules & Important Recent Decisions

Webinar Date: 09/09/2015

Some patent owners believe they have been forced to fight in AIA trials with one hand tied behind their backs. The USPTO has registered those complaints, and the rules proposed last month offer changes that are expected to improve patent owners’ odds at the popular PTAB forum. Our panel, featuring a lead administrative patent judge (APJ) at the PTAB and two experienced post-grant litigators, will discuss in detail what the proposed changes are likely to mean in practice, focusing on: 1) the patent owner’s new ability to offer evidence in its preliminary response and 2) the lowering of the hurdle to amend claims through clarification of the relevant prior art, as explained in the recent inter partes review opinion ImageMaster 3D. The panelists will also discuss the pros & cons of a proposed pilot program under which a single APJ would decide whether to institute an IPR trial, with two additional APJs being assigned to conduct the IPR trial, if instituted.

Hon. Michael Tierney, U.S. Patent & Trademark Office
Steven Baughman, Ropes & Gray LLP
Lissi Mojica, Dentons US LLP




Amgen v. Sandoz: What Now?

Webinar Date: 09/02/2015

Now that the “patent dance” spelled out in the 2010 Biologics Price Competition and Innovation Act (BPCIA) has been declared by the Federal Circuit to be just one option open to biosimilar market aspirants, the expectations of many industry participants have been upended. Our panel includes two patent litigators, one who counsels on biosimilar launches and one who counsels on branded strategy, as well as an FDA regulatory attorney who represented biotech innovators in the lengthy legislative negotiations leading to the BPCIA. They will discuss:

  • Branded company strategy now that an innovator may have only six months notice before a biosimilar launch; the implications of having no information about the biosimilar maker’s patent strategy or manufacturing process; the new importance of competitive intelligence;
  • Biosimilar launch strategy, including the pros & cons of the BPCIA pathway – will any biosimilar aspirants still choose to go the BPCIA route?; the importance of due diligence and assessing at-risk launches;
  • New litigation dynamics outside the BPCIA, including crucial preliminary injunction battles, discovery, licensing, damages and willfulness; and
  • The next front and the end game: en banc at the Federal Circuit? How will this all end up?

Krista Carver, Covington & Burling
Kevin Nelson, Duane Morris
Elizabeth Weiswasser, Weil, Gotshal & Manges LLP




Functional Claims Hit a Wall: Impact of Williamson v. Citrix

Webinar Date: 07/15/2015

In litigation involving means-plus-function claims, the June en banc Federal Circuit opinion, Williamson v. Citrix, is a game changer. The Federal Circuit overruled its own prior precedent that stated a “strong” presumption that claim limitations that do not use the term “means” are not means-plus- function limitations. “Henceforth, we will apply the presumption as we have done prior to Lighting World (2004), without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong’.” In the new decision the court also made it easier to prove a claim indefinite by overruling the prior strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.” The panel will discuss how this change is likely to play out for both patent owners and alleged infringers.

Speakers:

Richard Megley, Lee Sheikh Megley & Haan
James Myers, Ropes & Gray LLP
Prof. Michael Risch, Villanova University School of Law




Lessons from Proxyconn: Federal Circuit's First Reversal of an IPR

Webinar Date: 07/07/2015

In mid-June, for the first time, the Federal Circuit reversed and remanded the claim construction in an inter partes review back to the PTAB, breaking an almost unbroken string of Rule 36 summary affirmances. The appellate move offers encouragement to patent owners by illustrating circumstances where the Federal Circuit is willing to point out the flaws in a PTAB decision invalidating a patent.

Our panel, which includes a Federal Circuit specialist and two experienced PTAB litigators, will examine the lessons to be learned from Microsoft v. Proxyconn regarding both claim construction and amending claims, where the appeals court gave some reason for optimism to patent owners who want to appeal the PTAB’s denial of a motion to amend a patent. The panelists will also discuss procedural questions regarding the PTAB’s handling of remands and give their views on how the relationship between the Federal Circuit and the PTAB will evolve.

Speakers:

Gregory Castanias, Jones Day
Gerald Flattmann Jr., Paul Hastings LLP
David O’Brien, Haynes and Boone, LLP




Privity and RPI at the PTAB, with Judge Michael Tierney

Webinar Date: 06/04/2015

The significant estoppel provisions in the AIA –regarding PTAB proceedings, as well as U.S. district court and ITC litigation — apply not only to entities that are directly involved in adversarial proceedings, but also to those who are in privity to those entities. But just who is in privity or a real-party-in-interest in these situations? Many fact patterns can raise questions of privity in patent litigation, including joint-defense groups, manufacturer-customer ties, and parent-subsidiary relationships as a result of M&A, causing considerable uncertainty about how each case will play out in front of the PTAB. And the PTAB must evaluate privity in a way consistent not only with the AIA, but also with other federal case law.

This webinar, which features a well-known PTAB trial judge, will analyze the statutes and the case law, and discuss strategic considerations regarding privity and post-grant proceedings.

Speakers:

Matthew Berkowitz, Kenyon & Kenyon
Eliot Williams, Baker Botts
Hon. Michael Tierney, U.S. Patent & Trademark Office




Estoppel at the PTAB, with Judge Michael Tierney: Recent Decisions involving 325 (d) and 315 (e)1

Webinar Date: 05/28/2015

“No more two bites at the apple” is this spring’s message from the Patent Trial and Appeal Board. Recent PTAB decisions have adopted a broad reading of the scope of the estoppel provisions of the AIA, blocking petitioners from repeated tries at invalidating the same patent claims in multiple inter partes reviews. In Conopco dba Unilever v. P&G, the Board ruled that if prior art could reasonably have been discovered by an experienced patent searcher, it could likely trigger estoppel – no matter if that reference was unknown to a particular patent challenger. Also, a petitioner’s interpretation (or reinterpretation) of what a prior art reference teaches, and how it stacks up against claim elements, likely cannot be used to avoid estoppel.

Our panel includes two litigators who represent patent owners and petitioners at the PTAB, and a lead PTAB administrative judge. They will discuss how the Board’s view of estoppel may change PTAB practice by, for instance, encouraging petitioners to include alternative claim interpretations in one petition, and by spurring new potential disputes about what constitutes a diligent search. They will also discuss the latest on real-party-in-interest/privity considerations that play an important role in estoppel.

Speakers:

Herbert Hart, McAndrews, Held & Malloy, Ltd.
Stephen Kunin, Oblon, McClelland, Maier & Neustadt, L.L.P.
Hon. Michael Tierney, U.S. Patent & Trademark Office




USPTO and Plain Meaning of Terms

Webinar Date: 05/21/2015

At its two-day Patent Quality Summit at the end of March, the USPTO asked for public comment on a detailed set of proposals on how the agency could improve the quality of issued patents. That comment period was extended recently to May 20. IPO commented on May 6.

Practitioners may not be aware that the USPTO has already taken steps, through new examiner training guidelines, to make the record clearer during prosecution by explaining claim interpretation as necessary. Through the new clarifications, the guidelines explain, “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean”. Examiners received training on the new guidance this spring. The goal of the new initiative, according to the USPTO, is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Our webinar features the head of IP at a technology company and a law firm patent litigator. They will explore the implications of the change for patent prosecution and litigation. Our third panelist is an attorney from the USPTO’s Office of Legal Administration, who will explain how the new guidelines will work in practice.

Speakers:

Brenton Babcock, Knobbe, Martens, Olson & Bear, LLP
Gary Ganzi, Evoqua Water Technologies LLC
Joseph Weiss, U.S. Patent & Trademark Office




Drafting Patents with an Eye to the PTAB

Webinar Date: 05/14/2015

Petitioner success in invalidating thousands of patent claims in the two-and-a-half years since the inauguration of the inter partes review means that every important patent needs to be drafted and prosecuted with an eye toward strengthening its chances at the PTAB. Because the patent owner’s preliminary response to an IPR petition cannot present new evidence, the ideal time to prevent a challenger’s IPR petition from being instituted is before the IPR is filed.

This webinar will give tips for patent claim and specification drafting that can go a long way to bullet-proofing a patent, as well as advice on savvy prosecution strategy using declarations, continuation applications, reexamination, and reissue. For instance, submitting arguments and declarations supporting §112 and §103 positions during patent prosecution will give the patent owner a powerful defense for use, if needed, in an IPR. Such declarations can be used to make the argument for non-obviousness, for instance, by supplying evidence of commercial success that otherwise would not be available at the PTAB.

Speakers:

Courtenay Brinckerhoff , Foley & Lardner
Michelle Macartney, Intellectual Ventures
Thomas Rozylowicz, Fish & Richardson




Issue Preclusion: Impact of B&B Hardware v. Hargis on Patent Law

Webinar Date: 04/09/2015

Last month’s decision by the U.S. Supreme Court in B&B Hardware v. Hargis involves a trademark opposition running in parallel with a trademark infringement lawsuit. The court held that a final decision by the USPTO’s Trademark Trial and Appeal Board (TTAB) can serve as issue preclusion to collaterally estop a court from rejudging already-decided issues.

What will be the impact on patent law of that decision? The same reasoning that led the Supreme Court to its decision in B&B regarding the TTAB and issue preclusion may well apply to determinations made during inter partes and post grant review proceedings at the PTAB. Issue preclusion applies to individual decisions of fact or law and thus may be important regarding claim construction, scope and content of the prior art, and level of skill in the art.  However, the U.S. Supreme Court recognized that issue preclusion does not apply to agency
decisions when Congress so indicates. Do the estoppel provisions in the IPR/PGR statutes suggest that Congress has opted out of the issue preclusion arena for these decisions? Our panel includes a leading patent practitioner with experience in post-grant proceedings and two top appellate specialists.

Speakers:

Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Andrew Pincus, Mayer Brown LLP
Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP




Commercial Success at the PTAB

Webinar Date: 03/25/2015

Attacks by challengers using prior art have claimed the life of more than two thousand patent claims since inter partes review (IPR) became available in 2012. Commercial success is a defense patent owners may have to fend off obviousness challenges.

This webinar will focus on how patent owners can make the best case for commercial success at the PTAB, taking into account evidentiary and time restraints. The PTAB has been strict about requiring a nexus between commercial success and the patented technology. Our panel, which includes an economist, a business school professor who specializes in consumer choice, and a patent litigator will discuss how to make a case for that nexus. Likewise, the panelists will consider how a petitioner can poke holes in the arguments of the patent owner that its commercial success shows non-obviousness. For instance, in a recent IPR involving a spinal fusion implant, the patent owner’s attempt to use commercial success didn’t work — it made no attempt to show how that success was not the result of advertising, promotion or other business events.

Speakers:

Pradeep Chintagunta, The University of Chicago Booth School of Business
Michael Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
John Jarosz, Analysis Group




Hatch-Waxman and Biologic Strategies at the PTAB

Webinar Date: 03/03/2015

This month was a watershed for biopharmaceutical patents in post-grant proceedings. The PTAB invalidated claims for three patents on Genzyme’s treatment for Pompe disease in an inter partes review brought by a would-be competitor, a first for a biologic. And an IPR attack even came from outside the pharma industry: a hedge fund manager linked up with a well-known non-practicing entity to target Acorda Therapeutics’ patent on a multiple sclerosis drug. Some fear threats of an IPR to win a settlement from a company even before a petition is filed.

These patents are among the growing number of biopharmaceutical patents that have been targeted recently at the PTAB. This webinar will analyze how inter partes review and other post-grant proceedings should influence Hatch-Waxman/small molecule and biologic litigation strategies. Compliance with multiple tricky timelines is involved. Our panelists include a litigator who succeeded in the first-ever defense of a drug patent on a granted petition for IPR; a Hatch-Waxman litigator who represents generic companies; and a life science lawyer who has experience in biologics and leadership experience at the USPTO.

Speakers:

Cynthia Hardman, Goodwin Procter, LLP
Gerald Flattmann Jr., Paul Hastings
Teresa Stanek Rea, Crowell & Moring, LLP




Ex Parte Reexam: New Tactics, Old Tool

Webinar Date: 02/13/2015

Ex parte reexamination was once the only way to challenge patents at the USPTO that were issued from applications filed before November 29, 1999. Since 2012 and the AIA, filings for ex parte reexam have slumped by 50 percent, as challengers quickly embraced inter partes review as a superior way to demonstrate unpatentability.

But reexam filings have started to climb again. The older proceeding has emerged with new virtues for both challenger and patent owner in the jab and counter-jab of litigation and IPR. For challengers, for instance, ex parte reexam is a way to get additional prior art in front of the USPTO that the PTAB won’t include in an IPR, or to interpret the same prior art differently after the patent owner has taken a stand in response to an IPR petition. For the patent owner, reexam has emerged as a better place to amend claims than the PTAB. What’s more, those amended claims may be insulated from IPR from the same parties. According to the PTAB, amended or new claims inserted into a patent as part of a reexamination proceeding do not result in a “new patent” and thus the one-year bar erected by
35 U.S.C. § 315(b) continues to run from the date of an original suit against an accused infringer.

Our panelists analyzing reexam’s new role will be a law firm lawyer who has recently filed ex parte rexams on behalf of a challenger, an in-house counsel active in post-grant matters, and the former head of the USPTO’s Central Reexamination Unit.

Speakers:

Matthew Berkowitz, Kenyon & Kenyon LLP
Mollybeth Kocialski, Oracle Corporation
Lissi Mojica, Dentons US LLP




Hope for Software Patents? DDR v. Hotels.com

Webinar Date: 01/22/2015

Last month the Federal Circuit issued its first post-Alice opinion that upheld the validity of computer-implemented business method claims under section 101. In DDR Holdings v. Hotels.com, Judge Raymond Chen, writing for the panel majority, affirmed the Eastern District of Texas’s denial of the defendant’s motion for judgment as a matter of law that DDR’s patent covering systems and methods of generating composite web pages was invalid. Judge Chen distinguished this case from others, including Ultramercial, buySAFE, Accenture, where software patents were invalidated.

Our panel of litigators will discuss the implications of this appellate opinion. In addition, they will analyze recent district court decisions in which software patents swam against the tide to survive challenges, including California Institute of Technology and Ameranth, as well as a recent PTAB decision that found the claims a patent of Secure Axcess valid.

Speakers:

Lawrence Hadley, McKool Smith
Stephen Hankins, Schiff Hardin LLP
Jose Villarreal, Wilson Sonsini Goodrich & Rosati