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Post-Grant Proceedings: Practical Tips and Strategies in 2017

Intellectual Property Law CLE

Post-Grant Proceedings: Practical Tips and Strategies in 2017

Live Webcast Date: Tuesday, February 14, 2017 at 3:00 pm - 4:00 pm (ET)
Intellectual Property LawRecording

One of the most significant and notable changes brought by the American Invents Act (AIA) are the post-grant proceedings. These proceedings include Post-Grant Review (PGR); Inter Partes Review (IPR) and the Transitional Covered Business Method procedure (CBM). To successfully assert or defend a post-grant proceeding, every patent lawyer must understand the unique nature of the proceedings, the extensive procedures outlined in the USPTO rules and the litigation aspects of the proceedings.

The Knowledge Group has assembled a panel of key thought leaders to provide the audience with practice tips for post-grant validity proceedings. In a two-hour Webcast, they will discuss a range of topics including:

  • An Overview of Post-Grant Proceedings
  • Current Statistics and Trends
  • USPTO Rules for AIA Post-Grant Proceedings
  • Estoppel Challenges
  • Recent Filings and Decisions
  • Strategic Filing Considerations

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

Faculty

Jonathan R. Bowser

Jonathan R. Bowser
Counsel
Buchanan Ingersoll & Rooney PC

Vivek Ganti

Vivek Ganti
Attorney
Hill, Kertscher & Wharton, LLP

Click Here to Read Additional Material

Jonathan R. Bowser, Counsel
Buchanan Ingersoll & Rooney PC
  • New developments in AIA trials.  In which situations should patent owners take advantage of the new rules to submit testimonial evidence with preliminary responses?  
  • Evaluating the PTAB’s evidentiary requirements for petitioners to demonstrate that asserted references qualify as prior art (e.g., printed publications, and on-sale and public use-type prior art in PGR proceedings), and for patent owners to establish earlier dates of invention for challenged patents (e.g., claiming priority to earlier applications, and antedating/swearing behind).
  • Developments in AIA estoppel.  How are the PTAB and district courts applying the estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e)? 

Vivek Ganti, Attorney
Hill, Kertscher & Wharton, LLP
  • Effectively structuring the grounds of a petition:  How do you select your grounds? How do you handle lots of prior art while reducing the risk of redundant grounds? How do you argue obviousness and anticipation using the same set of references?
  • Trends in obviousness IPR case law:  how to explain a motivation to combine; avoiding conclusory statements.
  • Tools for Patent Owners to counter a petition: real parties-in-interest challenges, deficiencies in a petitioner’s burden, defects in the prior art status
  • Changing strategies midstream:  How much freedom does a petitioner have to modify its arguments post-institution?  How much new evidence can a petitioner add in its reply

Jonathan R. Bowser

Jonathan R. BowserCounselBuchanan Ingersoll & Rooney PC

Counsel Jonathan Bowser focuses his practice on protecting and leveraging clients’ innovations and enforcing clients’ rights in post-grant patent challenges.  He specializes in post-grant proceedings including inter partes review, covered business method review, post-grant review, ex parte reexaminations, reissue applications, and patent litigation in federal courts and the International Trade Commission.  He has experience in preparing and prosecuting applications before the U.S. Patent and Trademark Office, including appellate procedures before the Patent Trial and Appeal Board and the Federal Circuit. 

Jonathan focuses his practice on patent portfolio management and procurement, strategic client counseling and rendering validity, infringement and freedom to operate opinions. He is a registered patent attorney with a technical area of focus in electrical, computer, semiconductor, telecommunications, medical devices, and business method-related inventions. He represents Fortune 50 companies to start-ups, both domestic and foreign.  

Read Jonathan’s insights on post-grant patent proceedings at Buchanan PTAB Report.

Vivek Ganti

Vivek GantiAttorneyHill, Kertscher & Wharton, LLP

As lead counsel, Mr. Ganti has participated in approximately 30 inter partes review (IPR) proceedings, including twenty IPR trials, representing petitioners and patent owners.  Mr. Ganti’s IPR experience extends into appellate practice where he has argued at the Federal Circuit on behalf of the appellant and appellee.  Much of his work in IPR practice overlaps with ongoing district court litigation, yielding strategic insights for parallel proceedings.

Mr. Ganti has worked with a variety of technologies including wireless and cellular networks, video transcoding, server-client systems, broadband gateway devices, packet switched networks, mesh networks, server blade systems, analog circuits, integrated circuit fabrication, power amplification, digital signal processing, Basic Input/Output Systems, other computer-based systems, and various biotech and pharmaceutical-related technologies. Prior to law school, Mr. Ganti was a product development engineer at Intel.

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   NONE

Course Code:
   146121

NASBA Field of Study:
   Business Law

NY Category of CLE Credit:
   Skills

Total Credit:
   1.0 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.

Buchanan Ingersoll & Rooney PC brings true partnership to their clients. With more than 500 attorneys and government relations professionals in 18 offices in the United States, Buchanan has formalized a model for consistently delivering the service attributes their clients most value. A nationally recognized firm, they provide a wide range of services in the areas of health care, financial services and banking, litigation, intellectual property, labor and employment, real estate, corporate and business law, tax, energy, and government relations. 

Website: http://www.bipc.com/

Hill, Kertscher & Wharton, LLP is a nationally recognized law firm representing individuals and businesses of all sizes in complex legal matters. Hill, Kertscher & Wharton, LLP’s legal team is led by a former general counsel for an international telecommunications company, a leading national I.P. litigator with lead counsel experience, including substantial trial experience, in over 200 cases, and an accomplished trial lawyer with a proven record of success in multi-million dollar litigation. The remaining members of our team consist of skilled and dedicated attorneys with extensive experience in both sophisticated transactional matters and high-stakes litigation involving a broad range of issues and technologies. A number of the team members have technical degrees.

Hill, Kertscher & Wharton, LLP law practice is unique in that the team develops very close relationships with clients. Hill, Kertscher & Wharton, LLP takes the time to understand their goals and work together with them to formulate and implement the best strategies for protecting their legal and business interests. Part of this is attributable to the team’s size. At 15 attorneys, the firm is large enough to handle the most complex and demanding legal matters, but small enough to do so with unmatched responsiveness and attention to detail.

Website: http://www.hkw-law.com/

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