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IP Chat Channel – Ethics

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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Inequitable Conduct After Regeneron: What Litigators, Patent Prosecutors, and Patent Owners Need to Know

Webinar Date: 01/10/2019

*CORRECTION:  In Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron.  [An earlier IPO webinar announcement on Jan. 4 inaccurately described the court’s decision.]

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A Federal Circuit decision in 2017 found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. This widened the scope of possible inequitable conduct claims, which traditionally focused only on the prosecution of the patent before the USPTO. 

  • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron. 

Critics of the decision hoped first for an en banc rehearing by the Federal Circuit — and then that the Supreme Court would grant Regeneron’s petition for certiorari. Those hopes were dashed late last year. 

This webinar features experts who will assess Regeneron’s significant ongoing impact on litigation and patent prosecution. The panel includes a patent prosecutor who urged the Supreme Court to grant cert. to Regeneron, a leading academic expert on legal ethics and IP, and a patent litigator who represented Therasense at the en banc Federal Circuit in Therasense v. Becton Dickenson (2011), a case that raised the bar for proving inequitable conduct. The panelists will discuss: 

  • Peerless Industries v. Crimson AV in the Northern District of Illinois (2018), where the court found no inequitable conduct, rejecting defendant’s argument citing Regeneron. 
  • Howmedica Osteonics v. Zimmer, in the District of New Jersey (2018), where the court granted the defendant’s motion for $13 million in attorney fees and costs in part because of plaintiff’s inequitable conduct before the USPTO 
  • The relationship between materiality under Therasense, the court’s claim construction, and the prosecutor’s judgment about what is cumulative 
  • Approaches that may be taken by defendants’ experts at trial 
  • The reinforced imperative for patent owners who are plaintiffs to closely oversee aggressive litigation counsel 

Speakers:  

  • Prof. David Hricik, Mercer University School of Law  
  • Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP  
  • Rohit Singla, Munger, Tolles & Olson LLP



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



Conflicts of Interest in Patent Prosecution after Maling v. Finnegan

Webinar Date: 02/10/2016

The recent decision of the Massachusetts Supreme Court in Maling v. Finnegan – a case of first impression — rejected the plaintiff’s argument that representing two clients in related technology areas is a per se violation of ethical rules. But the court stressed that representing competing companies with similar inventions could give rise to ethical violations in other factual scenarios. The opinion cautioned firms to carefully police their cases to avoid conflicts, “no matter how complex such a protocol might be … law firms run significant risks, financial and reputational, if they do not avail themselves of a robust conflict system adequate to the nature of their practice.”

Our panel includes the general counsel of a large diversified law firm that does patent prosecution; a law firm attorney who represents patent practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters; and an in-house counsel with responsibility for IP for major business segment of a multinational. They will discuss best practices for law firms and clients in light of Maling, and consider hypotheticals where the answer about conflicts is tough to call.

Speakers:
Martin Kaminsky, Greenberg Traurig, LLP
Scott Markow, Stanley Black & Decker, Inc.
Michael McCabe, Funk & Bolton