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IP Chat Channel – Post Grant Proceedings

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Patent Eligbility in the Life Sciences: Exergen and Praxair- and USPTO Memos on Vanda and Berkheimer

Webinar Date: 06/14/2018

Pity the life sciences patent prosecutor who tries to find a path through recent appellate court decisions regarding patent eligibility.  A recent concurrence in a divided Federal Circuit decision indicated that U.S. Supreme Court decisions like Mayo have left too much uncertainty about what is and is not patent eligible under section 101.  Like others in the IP community, the concurrence indicated that perhaps Congress should act.  But few experts expect a legislative fix to come quickly. That leaves both patent owners and applicants with a pressing need to assess the impact of recent significant Federal Circuit opinions, such as ExergenVanda and Praxair. 

  • Exergen and Vanda have been the cause for cautious optimism for some life science companies. 
  • Exergen’s invention, a diagnostic patent, was upheld under section 101 by the Federal Circuit, which was considered an important event post-Mayo. This decision is referenced in the USPTO’s Berkheimer memo of 19 April, which takes the agency into the uncharted territory of trying to decide how much and what kind of evidence it takes to show that an invention is not “well understood, routine and conventional.” 
  • Vanda affirmed a district court’s finding that claims to a personalized method of treatment are patent eligible. In early June, the USPTO issued a new memo to examiners on Vanda. The Federal Circuit decision didn’t address a number of relevant issues, however, such as whether a doctor could be a direct infringer through divided infringement. 
  • The most recent of the three decisions is far more ominous for life science inventions. Praxair, a recent appeal of an IPR decision, could result in many section 101 challenges being made in IPRs in the form of a printed matter/obviousness challenge. 

Our panel includes a life sciences expert at the USPTO, a top patent lawyer at a major pharmaceutical company, and a founding shareholder of an IP law firm who specializes in biotech.  They will assess the cumulative impact of recent changes and delineate prosecution strategies to address them. 

Speakers: 

  • Paul Golian, Bristol-Myers Squibb Company 
  • Ali Salimi, U.S. Patent & Trademark Office 
  • Warren Woessner, Schwegman, Lundberg & Woessner, P.A. 



A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard

Webinar Date: 05/31/2018

This webinar features the Chief Judge of the PTAB in conversation with two top litigators — one a leading practitioner at the PTAB and the other a preeminent advocate at the Federal Circuit and the Supreme Court — to discuss the path ahead after the recent host of major developments that will affect PTAB practice.

Topping the list of changes are those forced by the Supreme Court in its SAS decision this April. Changing some of the basic ground rules of AIA trials, SAS holds that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision.

Then, earlier this month the U.S. Patent and Trademark Office proposed a new rule that would change the claim construction standard used in America Invents Act (AIA) reviews. Under the proposal, the PTAB would no longer use the broadest reasonable interpretation standard to interpret the patent claims in an AIA review, replacing it with the standard used by federal courts and the U.S. International Trade Commission.

Many experts see both of these changes as making the PTAB an even more important venue for patentability challenges. But the Federal Circuit’s affirmance rate of PTAB decisions now hovers at around 70 percent, as it has increasingly demonstrated a willingness to send cases back to the Board. Our litigator panelists will give tips on how to build a successful appeal that results in remand or reversal, while the chief judge is expected to talk about the

impact of Federal Circuit decisions on PTAB practice. And panelists will discuss how to try to convince the PTAB to change its mind about invalidating a patent on remand, which occurs about 40 percent of the time.

Speakers:

  • Hon. David Ruschke, U.S. Patent and Trademark Office
  • Gregory Castanias, Jones Day
  • Erika Arner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP



After SAS: A Transformation of Post-Grant Practice

Webinar Date: 05/04/2018

SAS Institute v Iancu was by far the less highly anticipated of two important Supreme Court decisions on AIA proceedings that issued in late April. The justices rejected the opportunity to declare AIA trials unconstitutional in Oil States — and now it turns out that SAS, without advance fanfare, will have a very major impact on PTAB trials, as well as on appeals to the Federal Circuit and parallel district court litigation.

SAS held that that the PTAB must decide the validity of every challenged patent claim when it agrees to institute an AIA review. It can no longer pick and choose the claims regarding which it will issue a Final Written Decision. The Supreme Court’s opinion left many aspects of the implementation of this change to the PTAB’s discretion. Our panel includes a former Lead Administrative Patent Judge who just returned to private practice last fall, a leading practitioner before the PTAB who also specializes in appeals of PTAB decisions to the Federal Circuit, and a veteran patent litigator who has been involved in many parallel proceedings at the PTAB and in district court. They will analyze and discuss:

The implementation decisions that have already been decided and announced by the PTAB.

  • What the changes mean for cases instituted before SAS that are now pending before the PTAB and how both petitioners and patent owners should respond to the “do over.”
  • How should strategy change for challengers considering filing a fresh petition for an IPR and for the patent owner in its preliminary response and throughout the trial?
  • With respect to hundreds of appeals from the PTAB that are now pending at the Federal Circuit that were instituted on only a subset of the petitioner’s challenged claims: Should petitioners file a motion to vacate the appeal and remand the case back to the PTAB? What are the Federal Circuit’s options?
  • What will be the impact on parallel district court litigation, the district court’s decision to stay the case pending the PTAB Final Written Decision, and on estoppel of challenged claims?

Speakers:

  • Mitchell Stockwell, Kilpatrick Townsend & Stockton, LLP
  • Trenton Ward, Finnegan, Henderson,Farabow, Garrett & Dunner, LLP
  • Jon Wright, Sterne, Kessler, Goldstein & Fox PLLC



Biosimilar and Hatch-Waxman Litigation: Jurisdiction and Venue Issues

Webinar Date: 04/25/2018

Infringement litigation over biosimilars and pharmaceuticals poses its own knotty jurisdictional and venue issues due to the unique frameworks of the BPCIA and Hatch-Waxman.

These issues are particularly hot right now, with several disputes pending that could have a wide impact going forward, such as Momenta Pharmaceuticals v. Bristol-Myers Squibb. Further, after the Supreme Court’s TC Heartland decision, judges must decide where the artificial act of infringement occurs —and district courts are already split.

To help you navigate these complex issues, our panel includes the head of U.S. patent litigation for a major international pharma and biologic company that is active both as an innovator and in biosimilars, as well as two veteran litigators (one who typically represents innovators and the other who represents biosimilar applicants and generic drug companies). They will discuss what you need to know, and will make predictions, regarding:

  • Whether a biosimilar applicant will be able to bring BPCIA litigation before the brand sponsor brings its own suit.
  • Will a biosimilar maker who has not yet filed its marketing application with the FDA be able to appeal an unsuccessful inter partes review? Or does it need Article III standing to seek an appeal?
  • The complicated calculus regarding venue in both Hatch-Waxman litigation and BPCIA litigation.
  • Issues when there are multiple defendants in different jurisdictions.
  • How to deal with foreign defendants.

Speakers:

  • Cynthia Lamber Hardman, Procter Goodwin
  • Christopher Loh, Fitzpatrick, Cella, Harper & Scinto
  • Peter Waibel, Novartis



The Role of Facts in Patent Eligibility Decisions: Analysis and Strategy

Webinar Date: 04/12/2018

In the years since the Supreme Court’s decisions in Alice and Mayo, courts and litigants have reached inconsistent conclusions about the substance of judicial exceptions to patent eligibility. But, since the beginning of 2018, the focus has rapidly shifted to procedure, specifically about the nature and timing of factual inquiry in litigation.

The cause of the shift is a trio of patentee-friendly Federal Circuit opinions all penned by Judge Moore. These decisions, Berkheimer, Aatrix and Exergen, together can help preclude the early dismissal of suits and the grant of summary judgment motions on patent eligibility grounds on the basis that there are factual disputes that underlie the determination of patent eligibility under section 101. Hewlett Packard, the defendant in Berkheimer, has requested a rehearing of the case by the en banc Federal Circuit. It’s no exaggeration that the future of section 101 law in the

U.S. hangs in the balance, given the view of many experts that the Supreme Court is not eager to revisit these issues at present.

Our panel of experts will address:

  • How to best leverage these decisions to your advantage.
  • What you need to know about how to handle issues that could arise on appeal.
  • Who is likely to decide patent eligibility issues going forward, using what evidence, and at what stage of litigation?
  • What model will prevail: Making the factual decision at trial or a Markman hearing-type model disposing of patent eligibility before trial?
  • How does the analogy to obviousness determinations hold up?

Speakers:

  • Calvin Griffith, Jones Day
  • Daryl Joseffer, King & Spalding
  • Corey Salsberg, Novartis



Patent Prosecution Estoppel from PTAB Proceedings

Webinar Date: 03/29/2018

Until recently, the scope of estoppel triggered by PTAB trials was of concern primarily to litigators, who worried about their arguments being estopped in district court.

But patent prosecutors should also worry about estoppel arising from PTAB proceedings. This was made clear in the latest version of the USPTO’s Manual of Patent Examining Procedure that issued in January 2018, the first revision in two years. It states that, “[PTAB] trial proceedings yield information that may be considered material to pending related patent applications … [An] example of such material information is any assertion that is made during litigation and/or trial proceeding which is contradictory to assertions made to the examiner. Examples include evidence of possible prior public use or sales, questions of inventor ship, [or] prior art.” This sweeping requirement for additional disclosure signals a big change that can create issues for those prosecuting patent applications.

Our panel, which includes an in-house prosecutor for a technology company with a sophisticated understanding of law and procedure, a post-grant specialist, and former USPTO Deputy Commissioner for Patent Examination Policy, will discuss:

  • The USPTO program run every 2 weeks that creates links between filed petitions for AIA trials and the related applications, which is not accessible to the public or to the attorney of record.
  • How standard operating procedure for patent prosecutors must now change. The MPEP states that the prosecutor is in danger of violating his or her duty of disclosure if anything in the PTAB record known to be material to the patentability of any claim in an application is not submitted to the USPTO. What are the patent prosecutor’s responsibilities and how should they be fulfilled?

That some commenters have questioned whether the PTAB has authority to issue its estoppel rule, 37 CFR § 42.73(d)(3)(i). Should this have any impact on prosecutors’ behavior?

Speakers:

  • Jeff Hohenshell, Medtronic, Inc.
  • Stephen Kunin, Oblon
  • Scott McKeown, Ropes & Gray LLP



PTAB After Wi-Fi One: What's Next for Appeals?

Webinar Date: 02/22/2018

Defining the prerogatives of the USPTO’s Patent Trial and Appeal Board under the America Invents Act is one of the great unfinished tasks in U.S. patent law.

The en banc Federal Circuit made an important contribution to that effort in January, ruling in Wi-Fi One LLC v. Broadcom Corp. that PTAB time-bar determinations under 35 U.S.C. § 315(b) are appealable because they do not fall within the scope of the judicial-review prohibition of § 314(d). This overruled an earlier panel decision in Achates v. Apple.

Our panel includes a Lead Administrative Patent Judge on the USPTO’s Patent Trial and Appeal Board who has helped develop devise the rules for proceedings under the AIA, a former PTAB Administrative Judge now in private practice, an IP Counsel with Ford Global Technologies LLC who oversees its PTAB docket, and litigator who practices both at the PTAB and before U.S. district courts.

Our panelists will discuss:

  • The AIA’s various time bars as adjudicated by the PTAB – and whether there is a standing inconsistency among PTAB panels.
  • On which other issues are litigants likely to press for appeals such as the naming of all interested parties, or the reach of estoppel.
  • Real-party-in-interest and privacy, because in practice many potential appeals involve situations with various parties including joint defense groups, indemnification, and patent aggregators.
  • How will the PTAB respond to increased demands for discovery?

Speakers:

  • Hon. Michael Tierney, U.S. Patent & Trademark Office
  • Matthew Berkowitz, Shearman & Sterling LLP
  • Scott Kamholz, Covington & Burling LLP
  • David Kelley, Ford Global Technologies LLC



Definite Dysfunction: Functional Claiming after Mastermine Software v. Microsoft

Webinar Date: 12/06/2017

What happens when the Federal Circuit doesn’t follow the guidance of the Supreme Court? It puts patent prosecutors in a tough spot. Consider the Federal Circuit’s recent guidance on functional claiming in Mastermine v. Microsoft that reversed lower court’s finding of indefiniteness — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. That decision could provide helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class.

Some experts find it difficult to follow the Federal Circuit’s reasoning that distinguishes Mastermine’s claims as valid, and more fundamentally, worry that the Federal Circuit is disregarding the Supreme Court’s finding in Nautilus (2014) that a patent is indefinite if it doesn’t describe the invention with “reasonable certainty.” Already the PTAB has explained that it believes that the proper test for indefiniteness remains the test outlined by the Federal Circuit in In re Packard, which predates Nautilus. And lately, patent eligibility concerns usually limited to section 101 are cropping up in decisions regarding functional claiming. The panel will discuss this month’s decision BASF v. Johnson Matthew involving catalytic converter technology where the Federal Circuit reversed an indefiniteness finding.

Our panel will also discuss this tangled knot, and in untangling it, give their best advice for how patent prosecutors should proceed.

Speakers:

  • Charles Bieneman, Bejin  Bieneman
  • Dennis Crouch, University of Missouri
  • Scott McKeown, Ropes & Gray



Sovereign Immunity at the PTAB: Gimmick or Genius?

Webinar Date: 10/24/2017

When drug maker Allergan announced in early September that it had transferred patents on a best-selling eye drug to the Saint Regis Mohawk Tribe in upstate New York, IP experts were caught flat-footed. Allergan’s move to sidestep an inter parties review at the PTAB by taking advantage of the Tribe’s sovereign immunity brought patent law deep into unfamiliar territory.

The terrain might be strange, but many patent owners and petitioners now realize they need to understand the lay of the land. The St. Regis Tribe has also partnered with a company in the computer sector, making it clear that sovereign immunity is a challenge not only for generic drug companies but for any company threatened with patent assertion. Right now, deal makers far and wide are scrambling to do more transactions based on immunity. Our multi-disciplinary panel will address such questions as:
What is the nature of tribal immunity? Do Indian tribes offer special advantages in these deals, or could a patent owner just as well make a deal for a state government to harbor patents?
What was the basis for the PTAB’s earlier decisions this year to grant immunity to state university patent owners such as the University of Florida? How does tribal immunity differ from states’ immunity?
Does it make a difference to the legal analysis that the St. Regis Tribe took ownership of patents that were already being challenged at the PTAB?
Will the PTAB’s decision regarding the Allergan case be appealable?

Speakers:

  • Brendan Johnson, Robins Kaplan LLP
  • Lissi Mojica, Brooks Kushman PC
  • Shashank Upadhye, Amit Talati Upadhye



ITC Update: Brushing Off the PTAB and Other Recent Developments

Webinar Date: 09/27/2017

The volume of patent litigation in U.S. district courts is in a slump, but litigators who practice at the U.S. International Trade Commission remain busy. The institution of IP cases at the ITC rose last year to a five-year high, and is on an even faster pace so far this year.

Our panelists — an in-house counsel who manages ITC litigation for a technology company and two veteran ITC litigators at law firms — will examine the latest on a number of important issues relating to ITC practice:

  • Brushing off the PTAB: The ITC has been less willing than U.S. district courts to stay cases pending AIA proceedings. But recently the Commission has made clear it will show little deference even to a PTAB Final Written Decision (FWD). For instance, in Certain Network Devices, Related Software and Components Thereof (II), Inv. No. 337-TA-945, that pitted complainant Cisco against respondent Arista Networks, the ITC denied Arista’s request to suspend or rescind a limited exclusion order (LEO) and a cease and desist order (CDO) pending appeal of recent PTAB FWDs finding all claims of the Cisco’s asserted patents unpatentable. The ITC’s ban on imports until the Federal Circuit rules increases the leverage of ITC complainants considerably.
  • The latest on “domestic industry”: In a recent decision, an ITC judge found that investments by the patent holder’s licensee can satisfy the domestic industry requirement, a new wrinkle on the Commission’s view that a non-practicing entity can base its domestic industry requirement argument on its own licensing activity.
  • Expensive hassles for third parties: The wider definition of domestic industry makes it easier for a company that settled with an NPE to be dragged into a suit against a different respondent. Third parties also face time-consuming subpoenas.
  • The 100-day Pilot Program: A respondent has used it to get a quick decision on section 101 patent eligibility.

Speakers:

  • G. Brian Busey, Morrison & Foerster LLP
  • Blaney Harper, Jones Day
  • Lauren Hoffer, Dell Technologies



Private Right or Public Right? Preview of Oil States at the U.S. Supreme Court

Webinar Date: 09/14/2017

The oral argument in Oil States might not take place for months, but conversations about the case already enliven the offices of IP practitioners both in-house and at law firms. If the U.S. Supreme Court decides that AIA post-grant proceedings are unconstitutional, some think a period of chaos will follow, throwing into doubt, for instance, the status of the more than 1,300 patent claims the Patent Trial and Appeal Board has already canceled. In addition to vast practical implications, the case also will force contemporary answers to legal and philosophical questions about patents that somehow need to be adjudicated despite hundreds of years of U.S. case law: are patents private property that can only be invalidated by an Article III court? Or are they a public right closely entwined with a federal agency, thus giving the agency the power to revoke?

Our panel will offer a uniquely informed and balanced discussion of the case. It includes a patent professor who is strongly identified through his writing and research with the argument that patents are private rights; a top Supreme Court litigator who recently argued on behalf of an IPR petitioner in a recent petition for cert. (that was denied) that the validity of a patent concerns a public right that can be cancelled by the agency that erroneously granted the patent; and an appellate lawyer who argued a 2011 Supreme Court case, Stern v. Marshall, that concerned the constitutionality of adjudicating matters outside of Article III courts and resulted in a major disruption of bankruptcy courts.

Speakers:

  • William Jay, Goodwin Procter LLP
  • Prof. Adam Mossoff, George Mason University
  • Kent Richland, Greines, Martin, Stein & Richland LLP



Pharma Lessons from the PTAB: Litigation and Prosecution 

Webinar Date: 06/08/2017

After a slow start, AIA challenges are now a frequent life-or-death risk for biopharmaceutical patents, totaling 212 in 2016, more than twice the number two years earlier. Exemplifying the PTAB’s power was the Federal Circuit’s April decision in Novartis v. Noven that upheld the invalidation by the PTAB of claims covering Novartis’ dementia patch Exelon, even though both the Federal Circuit and Delaware’s federal court had earlier ruled otherwise. Our panelists, all litigators with extensive pharma patent PTAB experience, will spell out winning strategies specific to the industry for both patent owners and challengers, and also will highlight lessons for patent prosecutors that emerge from PTAB practice. Topics to be discussed include: 

  • The role of objective indicia of nonobviousness. Pharma patents do put up a better fight at the PTAB than other technologies: last year, a third of biotech/pharma claims survived PTAB trials, almost three times the survival rate of electrical/computer claims; 
  • The surge in PGRs challenges to pharma patents on Section 112 grounds of indefiniteness and enablement; 
  • The relationship between district court Hatch-Waxman litigation and PTAB challenges; 
  • How to inoculate continuations or divisionals of challenged patents to relevant prior art. 

Speakers: 

  • Eldora Ellison, Sterne Kessler Goldstein & Fox, PLLC 
  • Cynthia Lambert Hardman, Goodwin Procter LLP 
  • Kerry Taylor, Knobbe, Martens, Olson & Bear LLP 



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