Intellectual Property Owners Association

Serving the Global Intellectual Property Community


IP Chat Channel



Intellectual Property Owners Association’s weekly one-hour webinar series
on current topics in IP is produced in cooperation with host Pamela Sherrid,
former editor of IP Law & Business magazine. Listen to presentations by
experts who will answer your questions immediately!

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2016 Scheduled Webinars


Parallel Proceedings in District Court and the PTAB: Midstream Maneuvers
Tuesday, 20 September 2016, 2:00pm-3:00pm ET

Parallel Proceedings in District Court and the PTAB: The Endgame 
Thursday, 22 September 2016, 2:00pm-3:00pm ET

Our panels 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.

On September 20, the panel for Midstream Maneuvers 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.

The panelists on September 22 for The Endgame 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.

Tuesday, 20 September 2016, 2:00pm-3:00pm ET

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

Thursday, 22 September 2016, 2:00pm-3:00pm ET

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

The Latest on Means-Plus-Function Claims: One Year After Williamson v. Citrix

Patent Prosecution
Wednesday, 28 September 2016, 2:00pm-3:00pm ET

Patent Litigation
Thursday, 29 September 2016, 2:00pm-3:00pm ET

Rooting out vague patents is a priority for the courts, the USPTO, even the White House.  These two webinars will look at patent prosecution practice and litigation experience since last year’s en banc Federal Circuit decision in Williamson v. Citrix, which threw more patent claims under the requirements of Section 112(f) of the patent law.  Earlier, the Federal Circuit held that if the patent does not include the word “means,” there is a strong presumption that the requirements of Section 112(f) do not apply. However, last year the full court said imposing such a presumption “resulted in a proliferation of functional claiming” not tied to the strictures of the statute.

The panel on Wednesday, 28 September on Patent Prosecution includes a USPTO official with a technical background in software. With two law firm patent prosecutors, she will discuss the criteria the USPTO uses to decide whether a claim invokes Section 112(f) and what structural disclosure is enough to support such a claim. The discussion will also include the pros and cons of having a claim fall under Section 112(f) considering recent tighter application of Sections 112(b) and Section 101, the latest on best practices for prosecuting patents, and the concern that patents still being approved by the USPTO might not pass muster in litigation.

The panel on Thursday, 29 September on Patent Litigation will consider the impact of Williamson v. Citrix at the Federal Circuit in cases such as Advanced Ground v. Life360 and Media Rights Technologies v. Capital One, which both confirmed a district court’s decision that the asserted patent claims are indefinite.  The panel will also consider the potential landmines awaiting patent challengers whose petitions raise questions of indefiniteness in an inter partes review (IPR) proceeding at the PTAB. Not only may the petition fail, but the challenger’s position in a parallel U.S. court proceeding can be compromised. PGRs, by contrast, look promising for challenging newly-issued patents for indefiniteness.

Wednesday, 28 September 2016, 2:00pm-3:00pm ET

Carolyn Kosowski, USPTO
David Easwaran, Alston & Bird LLP
Eric Raciti, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Thursday, 29 September 2016, 2:00pm-3:00pm ET

Mark Abate, Goodwin Procter, LLP
Richard Megley, Lee Sheikh Megley & Hahn
Frank Nuzzi, Siemens Corp.


IP Chat Channel webinars are available on-demand two days after the live webinar. A webinar can be viewed one-time only, either immediately or up to 14 days after payment. Topics are searchable within each of the categories below. Information on special package rates for webinars are available here.

IPO’s IP CHAT CHANNEL HOST PamelaHeadshot082812

Pamela Sherrid Former editor of IP Law & Business magazine and a reporter and writer at FortuneForbes and U.S. News & World Report.

Contact Us

For general inquiries or if you would like to be notified of future IP Chat Channel webinars or meetings, e-mail your contact information to or call (202) 507-4500.

Continuing Legal Education (CLE) Credit CLE will be available for registered attendees only.  Registered attendees must login under their attendee ID in order to verify attendance.  Once an attendee completes a course, a completed certificate of attendance must be submitted to IPO in order to receive credit (CofAs are provided by IPO once attendance is verified – usually 2-3 business days). LIVE WEBINARS:  IPO is applying for CLE for all live programs in the majority of the states that require CLE.  IPO will not be applying for CLE in the states of Florida, Ohio, South Carolina, West Virginia, or Texas (attorneys in TX may submit up to 5 hours of self-study credit). ON-DEMAND WEBINARS: For webinars recorded February 14, 2013 to present date, IPO is applying for CLE credit in CA, NJ, PA and VA.  At this time, IPO is not applying in any other states.  For webinars recorded prior to February 14, 2013, IPO will not be applying for CLE credit. For questions regarding which states IPO will apply to or other CLE related questions, contact or call (202) 507-4500.

Cancellation Policy Cancellations must be in writing and e-mailed to a minimum of two business days before the program start date to receive a refund, less a $50 processing fee. Please save all email correspondence to and from IPO. If you do not receive a confirmation email from WebEx within 24 hours of registering, please contact IPO at or 202-507-4500. Refunds are processed within 14 business days following the receipt of a written request. No-shows, late arrivals, unattended programs, or early departures are not eligible for refunds. Refunds are only applied to the same credit card that purchased the site registration.

Sponsorship Opportunities For information on sponsorship opportunities please contact Clara Stanfield at or call (202) 507-4500.