HomeWebcastThe Best Is Yet To Come: Significant Changes to the AIA Post Grant Proceedings
AIA Post-Grant Proceedings CLE

The Best Is Yet To Come: Significant Changes to the AIA Post Grant Proceedings

Live Webcast Date: Wednesday, January 27, 2016 from 3:00 pm to 5:00 pm (ET)
Legal (CLE)Recording

AIA Post-Grant Proceedings

Join us for this Knowledge Group AIA Post-Grant Proceedings Webinar. From the time when the America Invents Act came into effect in 2011, it has brought significant changes to the U.S. patent system, including the introduction of three types of post-grant proceedings, namely, inter partes reviews (IPRs), covered business methods (CBMs), and post grant reviews (PGRs). These proceedings provide patent challengers the opportunity to challenge a  patent in a more expedient and less expensive manner than district court litigation.

Under the current rules of the U.S. Patent and Trademark Office (USPTO), a patentee's ability to amend the claims in these post-grant proceedings is very restricted. Patentees are permitted to file a motion to amend by no later than the date that the IPR, CBM or PGR response is due.  The recent Federal Circuit decisions in In re Cuozzo Speed Technologies and Microsoft v. Proxyconn Inc. have provided guidance on the rules and procedures implemented by the USPTO that govern these post-grant proceedings. Additionally, the USPTO has requested comments on proposed amendments to the rules of practice, including rules governing amendment practice. Judicial decisions, PTAB decisions, and legislative changes will continue to significantly affect the strategies employed in every AIA post-grant proceeding. Therefore, patent challengers and patent owners must remain vigilant regarding these potential changes at the USPTO.

This course offers an overview of the latest trends and updates with respect to potential upcoming changes to AIA post-grant proceedings. A panel of thought leaders and practitioners assembled by The Knowledge Group will help firms and individuals better understand how to meet the requirements imposed by these changes.

In a two-hour webcast, the speakers will discuss:

  • AIA Post-Grant Proceedings – An Overview
  • Recent Requirements for Amending Claims in AIA Proceedings
  • Recent Federal Circuit Decisions
    • In re Cuozzo Speed Technologies
    • Microsoft v. Proxyconn Inc.
  • The Second Round of AIA Rule Changes
  • Recent Legislative Activity Affecting AIA Proceedings
  • Strategic Considerations for Petitioners and Patentees

Agenda

SEGMENT 1: 
Marc S. Weiner, Partner
Birch, Stewart, Kolasch & Birch, LLP

  • An overview of post grant (explanation of IPR, PGR and PGR for CBM and the differences between these procedures)
  • Trial statistics

SEGMENT 2: 
Marc V. Richards, Partner
Brinks Gilson & Lione

  • Motions to Amend Claims
  • Estoppel as to related PTAB proceedings
  • Establishing Prior Art Under 102(e)

SEGMENT 3: 
Ruben H. Muñoz, Counsel
Akin Gump Strauss Hauer & Feld LLP

  • Claim construction standard in post-grant proceedings
  • The Federal Circuit’s view on claim construction (In Re Cuozzo and Proxyconn)
  • Proposed rule changes regarding claim construction

SEGMENT 4: 
Lisa M. Ferri, Partner
Mayer Brown LLP

  • Update on the status (and statistics) of life sciences IPRs
    • Secondary considerations and unpredictability evidence
    • Lupin v. Vertex
  • Best practices for life sciences Petitioners and Patent Holders
  • Impact of rule changes on life sciences IPRs

SEGMENT 5: 
Sandra A. Frantzen, Shareholder
McAndrews, Held & Malloy, Ltd.

  • Logistics and strategic considerations for when to file an IPR
  • Advocacy at the PTAB - Presenting your case
  • Developments in the interplay with litigation / motions to stay

Who Should Attend

  • Patent Licensing Attorneys
  • Patent Attorneys
  • Patent Prosecutors
  • Patent Consultants
  • Patent Litigators
  • Private Companies
  • Private Practitioners
  • Patentees
  • Other related and interested individuals

AIA Post-Grant Proceedings

SEGMENT 1: 
Marc S. Weiner, Partner
Birch, Stewart, Kolasch & Birch, LLP

  • An overview of post grant (explanation of IPR, PGR and PGR for CBM and the differences between these procedures)
  • Trial statistics

SEGMENT 2: 
Marc V. Richards, Partner
Brinks Gilson & Lione

  • Motions to Amend Claims
  • Estoppel as to related PTAB proceedings
  • Establishing Prior Art Under 102(e)

SEGMENT 3: 
Ruben H. Muñoz, Counsel
Akin Gump Strauss Hauer & Feld LLP

  • Claim construction standard in post-grant proceedings
  • The Federal Circuit’s view on claim construction (In Re Cuozzo and Proxyconn)
  • Proposed rule changes regarding claim construction

SEGMENT 4: 
Lisa M. Ferri, Partner
Mayer Brown LLP

  • Update on the status (and statistics) of life sciences IPRs
    • Secondary considerations and unpredictability evidence
    • Lupin v. Vertex
  • Best practices for life sciences Petitioners and Patent Holders
  • Impact of rule changes on life sciences IPRs

SEGMENT 5: 
Sandra A. Frantzen, Shareholder
McAndrews, Held & Malloy, Ltd.

  • Logistics and strategic considerations for when to file an IPR
  • Advocacy at the PTAB - Presenting your case
  • Developments in the interplay with litigation / motions to stay

AIA Post-Grant Proceedings

AIA Post-Grant Proceedings

Lisa M. FerriPartnerMayer Brown LLP

Lisa M. Ferri is a partner in Mayer Brown’s Intellectual Property practice and serves as the IP Practice Leader for the New York Office. She focuses her practice on the trial and appeal of patent litigation in the Life Sciences field, including representing innovator companies in cases brought pursuant to the Hatch-Waxman Act.  Lisa serves as lead counsel on behalf of high-profile companies in federal courts across the country, Patent Office inter partes reviews, the International Trade Commission and the Federal Circuit Court of Appeals.  Following enactment of the AIA, Lisa handled one of the first co-pending inter partes reviews and district court litigations relating to the Orange Book listed drug Lexiva® -- which was the first “lead compound” IPR before the PTAB as well.

AIA Post-Grant Proceedings

Ruben H. MuñozPartnerAkin Gump Strauss Hauer & Feld LLP

Rubén H. Muñoz is a partner in the Philadelphia Office of Akin Gump Strauss Hauer & Feld LLP.  He practices law in the area of intellectual property, with an emphasis on patent infringement litigation.

Mr. Muñoz has represented companies in litigations involving a wide array of technologies, including automotive, medical devices, biotechnology, consumer products, pharmaceuticals, electronics, and software.  He has represented clients in district court, the International Trade Commission, and before the Patent Trial and Appeal Board of the U.S. Patent Office.

Prior to attending law school, Mr. Muñoz spent five years at Ford Motor Company’s Scientific Research Laboratory where he focused on the development of advanced engine technologies.

Mr. Muñoz is a graduate of the University of Pennsylvania Law School and holds a certificate in business and public policy from the Wharton School. He holds a master’s degree in mechanical engineering and a bachelor’s degree in chemical engineering from Louisiana State University.

AIA Post-Grant Proceedings

Marc S. WeinerPartnerBirch, Stewart, Kolasch & Birch, LLP

Marc Weiner has practiced intellectual property law for over 30 years. Mr. Weiner represents large international corporations including several Global 500 companies, various sized companies and universities. Mr. Weiner has extensive experience advising clients regarding management of their worldwide patent portfolios including preparation and prosecution of patent applications.  He specializes in the fields of chemistry (organic, inorganic, polymers, pharmaceutical chemistry, materials science including steel, alloys, mining and semiconductors), biotechnology, mechanical and “mechatronics” patents.

In addition, Mr. Weiner counsels clients with respect to freedom to operate issues, validity and infringement opinions and post grant proceedings before the USPTO. Mr. Weiner routinely lectures to both clients and professional organizations around the world concerning U.S. patent statutory and case law developments. Mr. Weiner currently serves as the editor of the firm's IP Update e-newsletter.

Mr. Weiner has a Bachelor of Science degree in chemical engineering from the Rutgers University College of Engineering (with Honors), a Bachelor of Arts degree in biological sciences from Rutgers College, a master’s degree in biotechnology from Johns Hopkins University, and a Juris Doctorate degree from the National Law Center, the George Washington University.

AIA Post-Grant Proceedings

Sandra A. FrantzenShareholderMcAndrews, Held & Malloy, Ltd.

Sandra Frantzen is a shareholder at McAndrews, Held & Malloy where she focuses on assisting clients with resolving intellectual property disputes.  A trial attorney and litigator, Ms. Frantzen has extensive litigation and consulting experience in various industries but has particular expertise in the medical device and chemical industries.  Ms. Frantzen is also well-versed in handling proceedings with the Patent Office and is currently lead trial counsel in several inter partes review proceedings.  She also advises clients on strategic intellectual property development, acquisition, protection and enforcement with a focus on value.  Ms. Frantzen was recently named to the Law Bulletin’s list of “40 Illinois Attorneys Under 40” and has lectured extensively on patent law issues including post issuance review proceedings.

AIA Post-Grant Proceedings

Marc V. RichardsShareholderBrinks Gilson & Lione

Marc Richards is a shareholder at Brinks Gilson & Lione where he co-chairs the Post Grant Patent Practice Group and the Chemical, Energy and Agriculture Industry Practice Group.  Mr. Richards has more than 20 years’ combined legal experience spanning many areas of intellectual property law including patent litigation, U.S. Patent & Trademark Office adversarial proceedings, and prosecuting and managing global patent portfolios.  His practice has an emphasis in patents involving computer software, business methods, material science, hydrocarbon and chemical processing, and pharmaceutical therapeutics.  He also counsels clients on patent infringement and invalidity investigations, licensing and trade secret matters.

Mr. Richards has lectured and written on numerous topics of intellectual property law.  He recently received a Burton Award for Legal Achievement in 2014 for his article “Three Years After Bilski.”  He has been recognized as an Illinois Leading Lawyer™ since 2006 and an Illinois Super Lawyer™ since 2013.  He currently serves as Treasurer for the AIPPI-US Group, a division of the AIPLA.


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AIA Post-Grant Proceedings

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   NONE

Course Code:
   145178

NASBA Field of Study:
   Business Law

NY Category of CLE Credit:
   Skills

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Mayer Brown is a global legal services provider advising clients across the Americas, Asia and Europe. Its geographic strength offers local market knowledge combined with global reach.  The firm is noted for its commitment to client service and ability to assist clients with their most complex and demanding legal and business challenges worldwide. Clients include many of the world’s largest companies, including a significant proportion of the Fortune 100, FTSE 100, DAX and Hang Seng Index companies, and more than half of the world’s largest banks.   Mayer Brown is particularly renowned for its Supreme Court & Appellate, Litigation, Corporate & Securities, Finance, Real Estate, Intellectual Property and Tax practices.

Website: https://www.mayerbrown.com/

Lisa M. Ferri is a partner in Mayer Brown’s Intellectual Property practice and serves as the IP Practice Leader for the New York Office. She focuses her practice on the trial and appeal of patent litigation in the Life Sciences field, including representing innovator companies in cases brought pursuant to the Hatch-Waxman Act.  Lisa serves as lead counsel on behalf of high-profile companies in federal courts across the country, Patent Office inter partes reviews, the International Trade Commission and the Federal Circuit Court of Appeals.  Following enactment of the AIA, Lisa handled one of the first co-pending inter partes reviews and district court litigations relating to the Orange Book listed drug Lexiva® -- which was the first “lead compound” IPR before the PTAB as well.

Rubén H. Muñoz is a partner in the Philadelphia Office of Akin Gump Strauss Hauer & Feld LLP.  He practices law in the area of intellectual property, with an emphasis on patent infringement litigation.

Mr. Muñoz has represented companies in litigations involving a wide array of technologies, including automotive, medical devices, biotechnology, consumer products, pharmaceuticals, electronics, and software.  He has represented clients in district court, the International Trade Commission, and before the Patent Trial and Appeal Board of the U.S. Patent Office.

Prior to attending law school, Mr. Muñoz spent five years at Ford Motor Company’s Scientific Research Laboratory where he focused on the development of advanced engine technologies.

Mr. Muñoz is a graduate of the University of Pennsylvania Law School and holds a certificate in business and public policy from the Wharton School. He holds a master’s degree in mechanical engineering and a bachelor’s degree in chemical engineering from Louisiana State University.

Marc Weiner has practiced intellectual property law for over 30 years. Mr. Weiner represents large international corporations including several Global 500 companies, various sized companies and universities. Mr. Weiner has extensive experience advising clients regarding management of their worldwide patent portfolios including preparation and prosecution of patent applications.  He specializes in the fields of chemistry (organic, inorganic, polymers, pharmaceutical chemistry, materials science including steel, alloys, mining and semiconductors), biotechnology, mechanical and “mechatronics” patents.

In addition, Mr. Weiner counsels clients with respect to freedom to operate issues, validity and infringement opinions and post grant proceedings before the USPTO. Mr. Weiner routinely lectures to both clients and professional organizations around the world concerning U.S. patent statutory and case law developments. Mr. Weiner currently serves as the editor of the firm's IP Update e-newsletter.

Mr. Weiner has a Bachelor of Science degree in chemical engineering from the Rutgers University College of Engineering (with Honors), a Bachelor of Arts degree in biological sciences from Rutgers College, a master’s degree in biotechnology from Johns Hopkins University, and a Juris Doctorate degree from the National Law Center, the George Washington University.

Sandra Frantzen is a shareholder at McAndrews, Held & Malloy where she focuses on assisting clients with resolving intellectual property disputes.  A trial attorney and litigator, Ms. Frantzen has extensive litigation and consulting experience in various industries but has particular expertise in the medical device and chemical industries.  Ms. Frantzen is also well-versed in handling proceedings with the Patent Office and is currently lead trial counsel in several inter partes review proceedings.  She also advises clients on strategic intellectual property development, acquisition, protection and enforcement with a focus on value.  Ms. Frantzen was recently named to the Law Bulletin’s list of “40 Illinois Attorneys Under 40” and has lectured extensively on patent law issues including post issuance review proceedings.

Marc Richards is a shareholder at Brinks Gilson & Lione where he co-chairs the Post Grant Patent Practice Group and the Chemical, Energy and Agriculture Industry Practice Group.  Mr. Richards has more than 20 years’ combined legal experience spanning many areas of intellectual property law including patent litigation, U.S. Patent & Trademark Office adversarial proceedings, and prosecuting and managing global patent portfolios.  His practice has an emphasis in patents involving computer software, business methods, material science, hydrocarbon and chemical processing, and pharmaceutical therapeutics.  He also counsels clients on patent infringement and invalidity investigations, licensing and trade secret matters.

Mr. Richards has lectured and written on numerous topics of intellectual property law.  He recently received a Burton Award for Legal Achievement in 2014 for his article “Three Years After Bilski.”  He has been recognized as an Illinois Leading Lawyer™ since 2006 and an Illinois Super Lawyer™ since 2013.  He currently serves as Treasurer for the AIPPI-US Group, a division of the AIPLA.

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