The USPTO Post-Grant Patent Trials Landscape: Practical Tips and Strategies to Avoid Pitfalls
The U.S. Patent and Trademark Office’s (USPTO) post-grant patent trials landscape is continuously evolving at a dizzying pace. A few months ago, the Office started using the Phillips standard in its America Invents Act (AIA) trials, thus, abandoning the “broadest reasonable interpretation” (BRI). Just this March 15, 2019, the USPTO published a notice that launched a final pilot program for motions to amend (MTA) in the same proceedings.
Join a panel of key thought leaders and litigators assembled by The Knowledge Group as they bring the audience to a road beyond the basics of USPTO post-grant patent trials. The panel will offer an in-depth discussion of the latest developments in the post-grant space as well as their implications in the near future. Speakers will also provide the audience with practical tips and strategies in bringing out the best in these cases in a rapidly evolving legal climate.
Key topics include:
- USPTO Post-Grant Patent Trials: Statistics
- Latest Regulatory Developments and Issues
- Addressing Potential Pitfalls
- Best Litigation Practices
Peter Kohlhepp, Partner
- Motions to amend status: overview of current statistics, best practices, future outlook
- Current status of constitutional challenges to the IPR system (in particular impact of/outlook for Arthrex decision), practice pointers for petitioners and patent owners
- Petitioner/patent owner estoppel – latest trends
James Stein, Partner
Lee & Hayes
- Petitioner estoppel – latest trends; and
- Patent owner estoppel – latest trends
Who Should Attend:
- Patent Lawyers
- Patent Agents
- Patent Consultants
Peter regularly represents clients in inter partes review proceedings (IPRs) before the Patent Trial and Appeal Board (PTAB). He has worked on matters involving a variety of technologies, including nutraceuticals, automotive technology, and medical devices. Peter has extensive experience in every step of the IPR process, from crafting IPR petitions and patent owner responses to arguing motions and final Oral Hearings.
Peter has developed a particular expertise in IPR procedure, helping clients to navigate the complexities of parallel district court and IPR proceedings. Peter also has participated in many IPR appeals, including recently helping a client convince the Federal Circuit to reverse and remand an IPR decision involving mechanical technology.
Peter regularly represents clients in inter partes review proceedings (IPRs) before the Patent Trial and Appeal Board (PTAB). He has worked on …
With nearly 15 years of experience, James has a diverse practice spanning all areas of patents, including postgrant proceedings (e.g., inter partes review and reexamination), strategic counseling, prosecution, litigation, and transactions. James particularly focuses on post-grant procedures before the Patent Trial Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), having been involved in over 80 proceedings on behalf of both petitioners and patent owners. James frequently speaks and writes on PTAB topics, and co-authored the second edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board, published by the American Bar Association. James has been recognized by Managing Intellectual Property magazine for his experience in PTAB trials.
James also helps companies build and expand patent portfolios through drafting and prosecution of patent applications across different technologies. James helps companies add value to their portfolios by strategically targeting claims to competitor activity and technical standards. James also oversees and manages large portfolios for clients, having prosecuted or overseen the prosecution of hundreds of applications in his career.
In his counseling practice, James advises on the potential risks posed by third-party patents and applications, rendering invalidity and noninfringement opinions for clients.
James also has significant experience in IP transactions, including through his role on AOL’s patent technical team in the 2012 $1.1B sale of its patent portfolio to Microsoft. Before entering private practice, James served as a patent examiner for the USPTO, examining patent applications directed to optical waveguide technology.
With nearly 15 years of experience, James has a diverse practice spanning all areas of patents, including postgrant proceedings (e.g., …
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Method Of Presentation:
Experience in patent law
NY Category of CLE Credit:
Areas of Professional Practice
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About Carlson Caspers
Carlson Caspers is an acclaimed intellectual property law firm, known for its prowess in intellectual property litigation and counseling, including patent infringement, trade secrets, trademarks, copyrights, data privacy, Hatch-Waxman, monetization, appeals and more. Founded in 2003 in Minneapolis, MN, the firm has built a reputation for remarkable client success in consumer, commercial and industrial markets across a wide range of complex, technology-driven sectors such as medical devices, life sciences, pharmaceuticals, nutraceuticals, data privacy, and wireless communications.
The experienced lawyers at Carlson Caspers are a diverse team of scientists, pharmacists, engineers, geeks, and technologists who focus on delivering value by respecting the client’s genius and bringing in-depth industry knowledge, technical experience, subject matter expertise, and a global business perspective to every legal challenge. Clients include Fortune 500 companies as well as small companies and individuals. For more information, visit http://www.carlsoncaspers.com.
About Lee & Hayes
Lee & Hayes is a pre-eminent intellectual property (IP) practice with expertise beyond the basics of IP. Over 80 seasoned IP attorneys and agents provide patent, trademark, copyright, and litigation services to businesses ranging from the Fortune 100 to leading-edge start-ups. The firm’s corporate and FDA/Regulatory practices synergize with their IP core to plan and execute comprehensive business strategies for technology clients. Lee & Hayes boasts attorneys who are consistently honored as being leaders in their respective practices by numerous leading industry publications and vetting organizations. For more information, visit leehayes.com.