Managing Patent Infringement Cases After the Duncan Parking Technologies Decision: Best Practices and Strategies
Recording Available: Thursday, December 17, 2020
In its 2019 Duncan Parking Techs., Inc. v. IPS Group, Inc. ruling, the Federal Circuit (the Court) overturned the Patent Trial and Appeal Board's (PTAB's) decision which held that '310 patent claims were not unpatentable as anticipated under 35 U.S.C. § 102(e). Refusing to apply the doctrine of equivalents, the Court also ruled that Duncan’s alleged single-space parking meter infringement did not function in the same way as IPS' claimed invention. It further affirmed the summary judgment of noninfringement granted by the district court.
Thus, companies and their counsel need to understand how this case impacts current cases and the general patent infringement landscape in order to devise up-to-date and effective litigation techniques.
Join Aaron Pereira and Philip Hirschhorn, patent attorneys from Panitch Schwarze Belisario & Nadel LLP, as they provide an in-depth discussion of the Duncan case and its implications on patent infringement case management. Speakers will also provide practical tips and litigation tactics in bringing out the best in these lawsuits in a rapidly evolving legal climate.
Key topics include:
- Duncan Parking Techs., Inc. v. IPS Group, Inc. – An In-Depth Analysis
- Implications of the Duncan Decision
- Significant Issues:
- The Use of a Patent Owner’s References as Prior Art
- Doctrine of Equivalents
- Claim Construction
- Handling Patent Infringement Cases Post-Duncan
- Best Practices and Litigation Tactics
Panitch Schwarze Belisario & Nadel LLP
Panitch Schwarze Belisario & Nadel LLP
Who Should Attend:
- Patent Litigators/Lawyers
- Patent Prosecutors
- Patent Managers and Consultants
- IP Consultants and Experts
- General Business Litigators
- Corporate Counsel
Aaron Pereira is a litigator and patent attorney, with a background in chemical & biomolecular engineering.
Aaron litigates and counsels on intellectual property issues in a variety of technical areas, with a focus life sciences. Aaron has extensive experience in complex patent litigation, Hatch-Waxman, and BPCIA matters. He has managed large parallel litigation in federal district court and at the Patent Office, and has developed a deep understanding of how to leverage the interplay of these proceedings to prove or avoid infringement. Aaron has been counsel to some of the world’s largest and most sophisticated companies, and regularly advises clients on matters of global patent strategy, market entry, and product competition. As a registered patent attorney, Aaron has prosecuted patents and rendered opinions in the life sciences space. He also has experience running large patent diligence reviews in support of corporate acquisitions and financing.
Aaron is active in professional and affinity groups, and currently chairs the Patents Committee at the NYC Bar Association.
Aaron Pereira is a litigator and patent attorney, with a background in chemical & biomolecular engineering. Aaron litigates and counsels …
Phil Hirschhorn is a partner at Panitch Schwarze, an intellectual property law firm. Phil is a trial lawyer specializing in patent litigation and other intellectual property proceedings, including post-grant proceedings before the Patent Trial and Appeals Board of the USPTO.
Phil’s extensive experience, spanning more than 30 years, includes bench trials, jury trials, and arbitrations. He has represented clients in traditional infringement/validity litigations as well as Hatch-Waxman (Paragraph IV) litigations. Phil also has experience handling copyright, trademark/trade dress, and trade secret litigation. Phil also advises clients on commercial patent licensing agreements.
Phil earned a bachelor’s degree from Columbia College and his law degree from Fordham University School of Law. He is a current co-chair of the Federal Circuit Bar Association's PTAB/TTAB Committee and the immediate past Chair of the NYC Bar Association's Patents Committee.
Phil Hirschhorn is a partner at Panitch Schwarze, an intellectual property law firm. Phil is a trial lawyer specializing in …
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About Panitch Schwarze Belisario & Nadel LLP
Panitch Schwarze Belisario & Nadel LLP is a boutique IP firm with a nationally ranked team of attorneys, focusing on all areas of patent, trademark, copyright, and trade secret law, across a broad range of technologies. Panitch attorneys regularly represent clients in both ex parte and adversarial proceedings in federal courts and before the U.S. Patent and Trademark Office. The firm’s boutique structure allows Panitch to offer a tailored experience to a broad range of clients, ranging from transnational companies to individual inventors. Panitch’s roots run deep in the domestic and international IP communities.