Claim Construction Standards and SAS in Post-Grant Trials: Trends, Developments and What Lies Ahead
Live Webcast Date:
Tuesday, April 30, 2019 from 3:00 pm to 4:00 pm (ET)
Online CLE Claim Construction
Join us for this Knowledge Group Online CLE Claim Construction Webinar. The Patent Trial and Appeal Board (PTAB) is drastically shifting to a new landscape with post-grant trial changes. Aiming to have an accurate and consistent patent validity, the United States Patent and Trademark Office (USPTO) changed from employing broadest reasonable interpretation (BRI) standard to Phillips claim construction approach, which applies to inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM) proceedings. Moreover, the U.S. Supreme Court, through its SAS Institute Inc. v. Iancu ruling, has ended the PTAB’s practice of allowing a patent challenge’s partial institution under the America Invents Act.
With these notable developments, both patent owners and petitioners must review their pre-existing strategies to ensure compliance with the new standards.
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 claim construction standards in post-grant trials. Speakers will provide the audience with an in-depth discussion of the changes’ implications in the future and will offer practical tips in bringing out the best in these cases in a rapidly evolving legal climate.
This Webcast will discuss the following:
- PTAB’s Post-Grant Trial: Recent Trends
- The SAS Institute Inc. v. Iancu Ruling
- Phillips Claim Construction Standards
- Notable Cases and Key Rulings
- Other Emerging Trends
- Red Flags
- Practical Tips and Strategies
- What Lies Ahead
Agenda
Andrew R. Cheslock, CounselBuchanan Ingersoll & Rooney PC
- Final Rule adopting Phillips standard in IPR, PGR and CBM proceedings
- Phillips vs Broadest Reasonable Interpretation Claim Construction Standard
- Reasons potentially favorable to Petitioners
- Reasons potentially favorable to Patent Owner
- Interplay between PTAB and district courts/ITC claim construction determinations
- Estoppel considerations
- Phillips vs Broadest Reasonable Interpretation Claim Construction Standard
- SAS
- “Partial Institution” vs. Decision of all challenged claims
- Reasons potentially favorable to Petitioner
- Reasons potentially favorable to Patent Owner
- Estoppel considerations
- Patent Owner Preliminary Response considerations
- PTAB assessment of challenged indefinite claims post-SAS
- “Partial Institution” vs. Decision of all challenged claims
White & Case LLP
Who Should Attend
- Patent Licensing Attorneys
- Patent Law Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Patent Agents
- Patentees
- Private Companies
- Other related and interested individuals
Online CLE Claim Construction
Andrew R. Cheslock, CounselBuchanan Ingersoll & Rooney PC
- Final Rule adopting Phillips standard in IPR, PGR and CBM proceedings
- Phillips vs Broadest Reasonable Interpretation Claim Construction Standard
- Reasons potentially favorable to Petitioners
- Reasons potentially favorable to Patent Owner
- Interplay between PTAB and district courts/ITC claim construction determinations
- Estoppel considerations
- Phillips vs Broadest Reasonable Interpretation Claim Construction Standard
- SAS
- “Partial Institution” vs. Decision of all challenged claims
- Reasons potentially favorable to Petitioner
- Reasons potentially favorable to Patent Owner
- Estoppel considerations
- Patent Owner Preliminary Response considerations
- PTAB assessment of challenged indefinite claims post-SAS
- “Partial Institution” vs. Decision of all challenged claims
White & Case LLP
Online CLE Claim Construction
Andrew R. CheslockCounselBuchanan Ingersoll & Rooney PC
Andrew’s intellectual property practice focuses on contentious matters with an emphasis on patent office litigation. He has extensive experience in inter partes review proceedings involving a wide variety of technologies, where his representations have been on behalf of both petitioners and patent owners. In addition to patent office litigation, Andrew has extensive experience in District Court litigation and investigations at the International Trade Commission (ITC), including hearing experience at the ITC. He also assists clients with patent counseling matters, including patent prosecution and due diligence in support of business deals.
Andrew also has extensive experience representing foreign clients in contentious U.S. patent matters, with a specific emphasis on clients headquartered in Japan. Through this experience, he has developed a unique insight into business cultures outside the U.S. and an ability to guide such clients through the unique processes of patent litigation in the U.S.
Brendan GavinAssociateWhite & Case LLP
Brendan is an associate in the Intellectual Property Group at White & Case and has more than 10 years of experience working in the field of patent law. His practice focuses on a variety of intellectual property issues, including worldwide patent portfolio development, patent prosecution, due diligence, and litigation support. Brendan has extensive experience providing freedom-to-operate, invalidity and patentability opinions, and he also assists the patent litigation group in contested proceedings, such as inter partes review and post grant review proceedings. Brendan regularly works with clients and inventors from large corporations, start-up companies and universities to develop ideal intellectual property protection strategies of technologies such as enzyme replacement therapies, modified polypeptides, fusion proteins, small molecules, nucleic acid therapeutics (including CRISPR and RNAi), antibody development, methods of treatment, diagnostic methods, drug formulations, and dosage regimens.”
Online CLE Claim Construction
Course Level:
Intermediate
Advance Preparation:
Print and review course materials
Method Of Presentation:
On-demand Webcast
Prerequisite:
General knowledge of post-grant trial
Course Code:
147830
NY Category of CLE Credit:
Areas of Professional Practice
Total Credit:
1.0 CLE
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About 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.
Speaker Firms
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Faculty
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Andrew R. Cheslock
Counsel
Buchanan Ingersoll & Rooney PC
Counsel
Buchanan Ingersoll & Rooney PC
Brendan Gavin
Associate
White & Case LLP
Associate
White & Case LLP
About 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.
Buchanan is a national law firm with a strong reputation for providing progressive, industry-leading legal, business, regulatory and government relations advice to our regional, national and international clients. Our 450 attorneys and government relations professionals across 17 offices proudly represent some of the highest profile and innovative companies in the nation, including 50 of the Fortune 100. While we service a wide range of clients, Buchanan has especially deep experience in the energy, finance, healthcare and life sciences industries. We bring to our clients an intimate knowledge of the players, market forces and political and regulatory landscape and use our full-service offerings to protect, defend and advance our clients’ businesses.
Website: https://www.bipc.com/
White & Case helps clients navigate the antitrust issues presented by the assertion of patent rights and represents both plaintiffs and defendants in such matters. We know the issues at the intersection of antitrust and intellectual property law, and our teams are staffed to include both antitrust and IP lawyers who collaborate across disciplines. These trial-ready interdisciplinary teams collaborate seamlessly, handling disputes and resolving challenges for our clients. We excel at taking the complex and making it simpler and understandable for judge and jury.
Both patent cases and antitrust cases including patent assertion typically involve highly complex issues ? both legal and technology issues. White & Case has an unprecedented track record of trial victories in complex antitrust cases. Our philosophy is that defendants too often settle these cases by agreeing to pay exorbitant settlements. While our past successes and trial-oriented preparations often allow us to achieve favorable settlements for our clients, we begin preparing for trial from day one and do not hesitate to take cases to the mat when necessary.
Website: https://www.whitecase.com/
Andrew’s intellectual property practice focuses on contentious matters with an emphasis on patent office litigation. He has extensive experience in inter partes review proceedings involving a wide variety of technologies, where his representations have been on behalf of both petitioners and patent owners. In addition to patent office litigation, Andrew has extensive experience in District Court litigation and investigations at the International Trade Commission (ITC), including hearing experience at the ITC. He also assists clients with patent counseling matters, including patent prosecution and due diligence in support of business deals.
Andrew also has extensive experience representing foreign clients in contentious U.S. patent matters, with a specific emphasis on clients headquartered in Japan. Through this experience, he has developed a unique insight into business cultures outside the U.S. and an ability to guide such clients through the unique processes of patent litigation in the U.S.
Brendan is an associate in the Intellectual Property Group at White & Case and has more than 10 years of experience working in the field of patent law. His practice focuses on a variety of intellectual property issues, including worldwide patent portfolio development, patent prosecution, due diligence, and litigation support. Brendan has extensive experience providing freedom-to-operate, invalidity and patentability opinions, and he also assists the patent litigation group in contested proceedings, such as inter partes review and post grant review proceedings. Brendan regularly works with clients and inventors from large corporations, start-up companies and universities to develop ideal intellectual property protection strategies of technologies such as enzyme replacement therapies, modified polypeptides, fusion proteins, small molecules, nucleic acid therapeutics (including CRISPR and RNAi), antibody development, methods of treatment, diagnostic methods, drug formulations, and dosage regimens.”
