HomeWebcastInter Partes Reviews & Post Grant Proceedings: Winning Strategies in the 2019 Battlefield
Online CLE Inter Partes Reviews CLE

Inter Partes Reviews & Post Grant Proceedings: Winning Strategies in the 2019 Battlefield

Live Webcast Date: Tuesday, June 18, 2019 from 12:00 pm to 1:30 pm (ET)
Intellectual Property Law (CLE)Recording

Online CLE Inter Partes Reviews

Since the enactment the America Invents Act (AIA), Inter Partes Review (IPR) and Post-Grant Review (PGR) proceedings have become the preferred legal routes in challenging patent validity and enforceability in various industries. With the proceedings’ upheld constitutionality by the U.S. Supreme Court, it is even more critical for companies to be well versed with the nuts and bolts of IPRs and PGRs. Counsel should be equipped with offensive and defensive winning strategies in pursuing patent challenges before the U.S. Patent & Trademark Office (USPTO).

Join a panel of key thought leaders and professionals assembled by The Knowledge Group as they bring the audience to a road beyond the basics of bringing or defending against a patent validity challenge and as they delve into the depth-analysis of the current trends and recent case law involving IPRs and PGRs. Speakers will also provide the audience with practical strategies in bringing out the best in these proceedings in a rapidly evolving legal climate.

Key topics include:

  • IPRs and PGRs: Overview and Statistics
  • Current Trends and Recent Case Law
  • IPRs vs. PGRs: Choosing the Better Option
  • Opportunities and Challenges
  • Best Winning Strategies

Agenda

James Stein, Partner
Lee & Hayes
  • Petition pitfalls and opportunities for the preliminary response
    • Problematic prior art
      • Use of non-patent literature as a prior art “printed publication”
      • Applicant’s admitted prior art in the challenged patent
    • Claim construction issues
      • Failing to apply proposed construction
      • Failing to propose critical construction
      • Means-plus-function claim terms
    • Anticipation ground issues
      • Disclosure in a single embodiment—arranged as in the claim
      • Stretching anticipation grounds
        • Inherency
        • No backup obviousness ground
    • Obviousness ground issues—insufficient reasons to combine references
      • Generic/conclusory reasons to combine
      • No reason why a person of ordinary skill in the art would have combined the references as proposed
      • That references are “analogous” not enough
      • No explanation of how references would be combined
    • Failure to name real-party in interest

Peter Kohlhepp, Partner
Carlson Caspers
  • IPR strategies in view of current estoppel trends
    • Federal Circuit Shaw decision in the post-SAS world
    • Petitioner strategies
    • Patent owner strategies
  • Use of secondary considerations/objective indicia of nonobviousness in IPRs
    • Petitioner strategies
    • Patent owner strategies
  • Motions to amend – updates and strategies  

John Mills, Patent Attorney
ReavesColey, PLLC
  • Discretionary denial under Sec. 314(a)
    • Changes in view of SAS Institute decision; possible broader exercise of discretion to deny trial
      • Denial even where petition demonstrates reasonable likelihood of success for some claims
      • Denial even where  petition filed BEFORE 315(b) one year bar (for efficiency purposes)
    • Petitioner strategies
    • Patent owner strategies
  • Issues under Sec. 325(d)
    • Impact if prior art was consider within the subject application
    • What about if the prior art was considered elsewhere in the patent family (parent case, other peripheral cases that share a common priority claim)
    • Petitioner strategies
    • Patent owner strategies

Who Should Attend

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

Preview Podcast

Please click the podcast below to hear the speakers discuss the key topics for this webcast.

Online CLE Inter Partes Reviews

James Stein, Partner
Lee & Hayes
  • Petition pitfalls and opportunities for the preliminary response
    • Problematic prior art
      • Use of non-patent literature as a prior art “printed publication”
      • Applicant’s admitted prior art in the challenged patent
    • Claim construction issues
      • Failing to apply proposed construction
      • Failing to propose critical construction
      • Means-plus-function claim terms
    • Anticipation ground issues
      • Disclosure in a single embodiment—arranged as in the claim
      • Stretching anticipation grounds
        • Inherency
        • No backup obviousness ground
    • Obviousness ground issues—insufficient reasons to combine references
      • Generic/conclusory reasons to combine
      • No reason why a person of ordinary skill in the art would have combined the references as proposed
      • That references are “analogous” not enough
      • No explanation of how references would be combined
    • Failure to name real-party in interest

Peter Kohlhepp, Partner
Carlson Caspers
  • IPR strategies in view of current estoppel trends
    • Federal Circuit Shaw decision in the post-SAS world
    • Petitioner strategies
    • Patent owner strategies
  • Use of secondary considerations/objective indicia of nonobviousness in IPRs
    • Petitioner strategies
    • Patent owner strategies
  • Motions to amend – updates and strategies  

John Mills, Patent Attorney
ReavesColey, PLLC
  • Discretionary denial under Sec. 314(a)
    • Changes in view of SAS Institute decision; possible broader exercise of discretion to deny trial
      • Denial even where petition demonstrates reasonable likelihood of success for some claims
      • Denial even where  petition filed BEFORE 315(b) one year bar (for efficiency purposes)
    • Petitioner strategies
    • Patent owner strategies
  • Issues under Sec. 325(d)
    • Impact if prior art was consider within the subject application
    • What about if the prior art was considered elsewhere in the patent family (parent case, other peripheral cases that share a common priority claim)
    • Petitioner strategies
    • Patent owner strategies

Online CLE Inter Partes Reviews

Online CLE Inter Partes Reviews

James SteinPartnerLee & Hayes

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.

Online CLE Inter Partes Reviews

Peter KohlheppPartnerCarlson Caspers

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.

Online CLE Inter Partes Reviews

John MillsPatent AttorneyReavesColey, PLLC

John represents clients in the area of strategic patent counseling, including the development of patent portfolios, freedom-to-operate strategies, and patent diligence in connection with corporate transactions.  He has experience drafting and procuring patents in a wide range of technologies, including medical devices, power systems, manufacturing processes, electronic control systems, and consumer products.  John also has significant experience in Patent Office “post-grant proceedings,” including reexaminations and inter partes reviews.  John has represented both patent owners and patent challengers in these proceedings.  Through this experience, John is able to help his clients before, during and after the procurement of a patent.


Click Here to Read Additional Material

Online CLE Inter Partes Reviews

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   General knowledge of patent laws

Course Code:
   148014

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
    1.5 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.

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.

Website: https://www.leehayes.com

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.

Website: https://www.carlsoncaspers.com/

ReavesColey is an entrepreneurial, agile law firm that specializes in highly regulated areas, such as patent law, government contracts, and international business and trade issues.  We are a group of seasoned attorneys with “big firm” experience, practicing in a manner that provides our clients with a high level of personalized attention.  Our patent group provides a wide array of services, ranging from all aspects of patent preparation, filing, and prosecution to IP diligence in support of corporate transactions.  We also assist clients with litigation counseling and support, including counseling and support in USPTO post-grant proceedings.  Our clients range from Fortune 500 companies to small startup companies developing new and exciting technology.

Website: http://www.reavescoley.com/

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.

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.

John represents clients in the area of strategic patent counseling, including the development of patent portfolios, freedom-to-operate strategies, and patent diligence in connection with corporate transactions.  He has experience drafting and procuring patents in a wide range of technologies, including medical devices, power systems, manufacturing processes, electronic control systems, and consumer products.  John also has significant experience in Patent Office “post-grant proceedings,” including reexaminations and inter partes reviews.  John has represented both patent owners and patent challengers in these proceedings.  Through this experience, John is able to help his clients before, during and after the procurement of a patent.

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