Post-Grant Proceedings on the Rise: Effective Tips to Upgrade Your Patent Toolbox
As the number of patents eligible for post-grant review (PGR) increases, the percent of PGR petitions are also expected to skyrocket. In addition, the availability of alternative invalidation grounds in a PGR may make it more effective than an inter partes review (IPR). However, because of other considerations, IPRs may be more beneficial in certain circumstances.
Before patent challengers decide whether to file a PGR or an IPR, they must consider first the efficiency and effectiveness of additional PGR tools. Filing a PGR may pose risk of increased estoppel, however, it offers a greater chance of invalidating a patent and requires lesser resources and burden of proof.
In this two-hour LIVE Webcast, a panel of distinguished professionals and thought leaders will help patent challengers and holders understand the fundamental aspects of this significant topic. They will provide an in-depth discussion of Post-Grant Proceedings, with particular focus on IPR and PGR. Speakers will also offer best patent management practices and strategies.
Key topics include:
- Trends in Post-Grant Proceedings
- PGR vs. IPR vs. Civil Litigation
- PGR’s Additional Invalidation Grounds
- Risk of Enhanced Estoppel
- Recent cases and changes with respect to IPRs
- Secondary Considerations in Post-Grant Proceedings
- Sources of Statistical Information for Post-Grant Proceedings
- Best Practices and Strategies
Matthew C. Phillips, Partner
Renaissance IP Law Group LLP
- Diagrams illustrating when IPR, PGR (and CBM) are available for various types of challenges, as compared to litigation.
- Is BRI still a reason, after the Supreme Court’s Cuozzo decision (which we should have by the time of our webinar) to challenge validity at the PTAB rather than court? Yes!
- Best challenges grounds to put forward in a petition.
- Effective use of experts.
- Best practices for patent owners, especially at the preliminary response stage.
Adam Smoot, Registered Patent Attorney
- Practical Approach
- Recent Rule Changes/Precedential Cases and Their Impact On Post Grant Proceedings
- Using Statistical information To Your Advantage
- The Importance of Getting Things Right Early (Practical and Statistical comments)
- Secondary Considerations (both Petitioner and Patent Owner)
Travis Ribar, Partner
Sughrue Mion, PLLC
- Specific secondary considerations … PTAB rulings in IPR’s
- Additional Discovery
- Perhaps -- Chemical Side of Patent Office – proper standard for “obviousness”
Darcy L. Jones, Partner
Kasowitz, Benson, Torres & Friedman LLP
** Speaker Bio to be added soon.. **
Who Should Attend:
- Patent Licensing Attorneys
- Patent Attorneys
- Patent Prosecutors
- Patent Consultants
- Patent Litigators
- Private Companies
- Private Practitioners
- Other related and interested individuals
Mr. Ribar is a partner at Sughrue Mion, PLLC. His practice focuses on USPTO proceedings, litigation, and on the analysis of issued patents. Mr. Ribar uses his experience as a former patent Examiner to advise clients during all stages of a patent’s life cycle, including application drafting and prosecution, as well as defending and asserting patents during post grant proceedings at the USPTO or during litigation. Mr. Ribar’s practice before the USPTO regularly includes patent prosecution and representing clients during Inter Partes Review, reexamination (both ex parte and inter partes), reissue, and interference proceedings.
Mr. Ribar has a Master’s Degree in Polymer Science and Engineering, and a Bachelor’s of Science in Engineering in Macromolecular Science. He uses his technical background as a basis for his work with patents and patent applications covering a wide range of technologies, including rubber compositions, pesticides, plastics and adhesives, photoresist formulations and applications, membranes, pharmaceutical compositions, medical and drug delivery devices, display devices, semiconductor materials, metallurgy, food compositions, golf balls, and polymeric materials.
Mr. Ribar is a partner at Sughrue Mion, PLLC. His practice focuses on USPTO proceedings, litigation, and on the analysis …
Adam Smoot's practice focuses primarily on post-grant proceedings before the United States Patent and Trademark Office, patent prosecution and counseling, and complex intellectual property litigation. Specific technology areas of emphasis include medical devices, chemical arts, software, hardware, optical systems, oil and gas systems, cellular telephone technology and standards, and geosciences. Adam has handled numerous inter partes review proceedings, as well as inter partes reexamination proceedings. He also has experience with other post-grant proceedings before the USPTO. Adam has represented both Petitioners and Patent Owners before the Patent Trial and Appeal Board. He received his J.D. from the University of Texas Law School and his B.S. in biomedical engineering from the University of Utah.
Adam Smoot's practice focuses primarily on post-grant proceedings before the United States Patent and Trademark Office, patent prosecution and counseling, …
Matt Phillips co-founded Renaissance IP Law Group after having been a partner at a large general-practice law firm. He has over 20 years of experience working with patents in a variety of settings, including government service as a patent examiner and a law clerk to Judge Alan D. Lourie at the U.S. Court of Appeals for the Federal Circuit. Matt’s practice focuses on post-issuance proceedings at the PTO, and he has been counsel in almost 40 AIA post-issuance proceedings. He is a co-creator and co-instructor for the biannual three-day “post-grant” course for Patent Resources Group, as well as an adjunct professor at Lewis & Clark Law School. He has co-authored over 40 articles, as well as a two-volume treatise, on post-grant topics.
Matt Phillips co-founded Renaissance IP Law Group after having been a partner at a large general-practice law firm. He has …
Darcy L. Jones is a partner in Kasowitz’s Silicon Valley office. Darcy represents industry leading companies in patent and trade secret litigation involving telecommunications, computer software, interactive web technologies, medical devices, pharmaceuticals, specialty chemicals, and luxury consumer products. Darcy has considerable experience representing clients in diverse and complex matters in all phases of litigation in state and federal courts, from pre-filing investigation through post-trial briefing and appeal. She has extensive experience arguing numerous discovery and dispositive motions, examining witnesses at trial, taking and defending expert depositions, and drafting trial and appeal briefs. Darcy has tried three patent cases to judgment in the past five years. Darcy is recognized in the 2015 edition of The Legal 500 and as a "Rising Star" in the 2014 edition of Georgia Super Lawyers.
Darcy L. Jones is a partner in Kasowitz’s Silicon Valley office. Darcy represents industry leading companies in patent and trade secret …
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About Sughrue Mion, PLLC
Sughrue Mion is a leading global intellectual property firm, helping thousands of companies from around the world navigate the complexities of patent and trademark law since 1957. Sughrue’s practice is focused solely on intellectual property law, and the firm has helped its clients secure more patents than any other U.S. patent firm. Many of Sughrue’s attorneys have worked as Examiners in the U.S. Patent and Trademark Office (USPTO), and more than 95 percent of the firm’s attorneys are licensed to practice before the USPTO. Sughrue brings unmatched experience in patent interference proceedings and Post Grant Review, including ex parte and inter partes reexamination proceedings. This expertise provides the firm’s clients with a clear advantage navigating the new America Invents Act (AIA). In addition to their legal expertise, Sughrue’s attorneys have technical and scientific backgrounds ranging from biosimilars to nanotechnology, allowing for a true understanding of their clients’ businesses and business challenges. For more information, please visit www.sughrue.com.
About Maschoff Brennan
Maschoff Brennan is a full-service intellectual property and commercial litigation law firm with offices in Park City and Salt Lake City and Orange County. Maschoff Brennan’s attorneys focus on patent and trademark prosecution, IP and complex litigation (including patent, trademark, copyright, and securities litigation and counseling), post-grant patent proceedings, IP/technology opinions and investigations, licensing and transactions, and IP portfolio management. Maschoff Brennan’s clients include Fortune 500 companies, multinational corporations, individual inventors, startups, and world-renowned universities. Visit www.mabr.com for more information.
About Renaissance IP Law Group LLP
Renaissance IP Law Group LLP is a boutique patent law firm headquartered in Portland, Oregon, and with an office adjacent the United States Patent and Trademark Office (PTO) in Alexandria, Virginia. Unlike traditional law firms that leverage the work of inexperienced associate attorneys, Renaissance consists of experienced lawyers only, and they enjoy actively working their cases. Renaissance has a modern organization without the large overhead of traditional law firms. Renaissance lawyers specialize in all types of proceedings and matters before the PTO, from patent applications to post-issuance proceedings, such as reexaminations, reissues, and inter partes reviews. The attorneys at Renaissance have worked on over 100 high-stakes PTO post-issuance proceedings.
About Kasowitz, Benson, Torres & Friedman LLP
Kasowitz, Benson, Torres & Friedman LLP is a national law firm primarily focusing on complex commercial litigation. Our practice encompasses all areas of litigation, including antitrust, banking, complex financial products, creditors' rights and bankruptcy, employment practices, entertainment, environmental, family law, general corporate and commercial, government affairs and strategic counsel, insurance recovery, intellectual property, international disputes, investigations and white collar defense, mass tort and product liability, real estate and securities. The firm's real estate and corporate groups handle transactions of substantial complexity and size. Our clients include leading companies in the high-tech, manufacturing, chemical, computer, energy, entertainment, consumer products, pharmaceutical and telecommunications industries, as well as major hedge funds, private equity firms, commercial banks, real estate developers and investors, regulated utilities and individuals. Our lawyers have been recognized by, among others, Chambers USA, The Legal 500, Benchmark Litigation, Best Lawyers in America, Law360 and Lawdragon for excellence in their fields.